T 





[AL BISCUIT COMPANY 



RADE MARK LITIGATION 



rders. Injunctions and Decrees of United 
(urts Relating to Unfair Cotapetitioi^ 
and Infringement of Trade M^rks 



Fourth £<^fcon 
J907 



IMMHI 



NATIONAL BISCUIT COMPANY 



TRADE MARK LITIGATION 



Opinions, Orders, Injunctions and Decrees of United States 

Courts Relating to Unfair Competition and Infringement 

of Trade Marks 



Fourth Edition 



1907 



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CONTENTS. 



National Biscuit Company v. Thomas and Clarke. . . 1 

National Biscuit Company v. Baker 7 

National Biscuit Company v. Kennedy 15 

National Biscuit Company v. Ohio Baking Company. 25 

National Biscuit Company v. Deininger 59 

National Biscuit Company v. Dake Cracker Company 67 

National Biscuit Company v. Walter 77 

National Biscuit Company v. Swick. . , 87 

National Biscuit Company v. Punchard 103 

National Biscuit Company v. Hargrave Biscuit Co. 113 
National Biscuit Company v. Hammell Cracker Co... 121 

National Biscuit Company v. Whiteside 129 

Table of Infringements abandoned before suit 161 



(Eircutf Qlouxi of l\)t Hnif eti ^Mt^ 

Northern District of Illinois 
Southern Division 



NATIONAL BISCUIT COMPANY ^ 

Complainatit, I 
vs. 

ALBERT V. THOMAS AND ROBERT 
D. CLARKE, 

DefendantK. 



DECREE 



IN EQUITY 



OFFIELD, TOWLE & LINTHICUM 
CHARLES K. OFFIELD 

For Complainant. 

PEIRCE & FISHER 
JAMES H. PEIRCE 

For Defendants. 



XATIOXAL BISCUIT COMPANY vs. THOMAS AND CLARKE 





NATIONAL BISCUIT COMPANY vs. THOMAS AND CLARKE 



FINAL DECREE. 



United States Circuit Court, 

Northern District of Illinois 

Southern Division. 



•( 



Monday, April 17, 1899. 

Present: Honorable Christian C. Kohlsaat, District 
Judge. 



National Biscuit Company, 
vs. 
Albert V. Thomas and Robert 
Clarke. 



4 



This day came the complainant, by Charles K. Offield, of 
the firm of Offield, Towle & Linthicum, its solicitors, and of 
counsel, and the defendants by James H. Peirce, of the firm 
of Messrs. Peirce & Fisher, their solicitors and of counsel, 
and thereupon the following proceedings were had: 

This cause coming on to be heard upon final hearing, upon 
the pleadings and affidavits filed herein, and the respective 
counsel being heard for the respective parties thereon, and 
being duly considered, it is therefore ordered, adjudged and 
decreed as follows: 

First: That the said word or name "Uneeda" is a good 
and valid Trade-mark or trade name for biscuits, crackers 
and other bakery products, and that the title thereof, and 
the entire and exclusive right in the use of the same as a 
Trade-mark or trade name, vest in said complainant. 

Second: That the package and wrapper thereof with the 
border and parallelogram arrangement upon the four longi- 
tudinal sides thereof, and the printed matter in relation 
thereto, as shown by " Complainant's Exhibit, Complainant's 
Package, Trade-mark and Wrapper, " are the equitable prop- 



2 NATIONAL BISCUIT COMPANY vs. THOMAS AND CLARKE 

erty, wrapper and label arrangement of the complainant 
herein, in connection with the manufacture and sale of bis- 
cuits, crackers and other bakery products. 

Third: That the defendants have infringed upon and 
violated the rights of the complainant by the use of the name 
or word "Uwanta" as a close imitation and simulation of 
the Trade-mark or name " Uneeda" of the complainant, and 
have closely imitated and simulated the package of the said 
complainant as to size and form, and the wrapper thereof 
as to arrangement of border, respective parallelograms and 
printed matter, in relation thereto, in the sale of the biscuits 
and crackers of said defendants. 

Fourth: That the said defendants, Albert V. Thomas and 
Robert D. Clarke, and each of them, and their respective 
agents, servants and employes, and each of them, be and 
hereby are perpetually enjoined from affixing, using or caus- 
ing or permitting to be used or affixed to or upon any bis- 
cuits, crackers or other bakery products or packages manu- 
factured by them, or bought or procured or sold by them or 
for them or either of them, or in which they are in any 
manner interested, the word ''Uneeda" or the word 
"Uwanta" or any word or synonym thereof or any word 
calculated to deceive or mislead, or any word colorably dif- 
ferent therefrom, and from affixing to any package, biscuit, 
crackers or bakery products any wrapper, label or other 
covering having thereon a border and parallelogram ar- 
rangement and accompanying letters in substantial imita- 
tion of the wrapper, label and package or box arrange- 
ment of the said complainant, and only colorably different 
therefrom, or from using any box or package construction, 
wrapper or label arrangement thereof, in the sale of biscuits, 
crackers and other bakery products, so contrived as to lead 
to the belief or to be calculated to lead to the belief, or to be 
liable to cause the public to believe, that the biscuits or 



NATIONAL BISCUIT COMPANY vs. THOMAS AND CLARKE 6 

crackers contained in such box, packages, wrappers or other 
covering, was manufactured or sold by the complainant. 

Fifth: It further appearing to the court that the said 
parties have agreed to settle the question of damages to the 
complainant and profits to the defendants out of court, 
within thirty days hereafter, no reference to Master for an 
accounting is at this time made. 

Sixth: It is further ordered, adjudged and decreed, that 
the defendants pay the costs herein to be taxed, and that 
complainant have execution therefor. 

Northern District of Illinois, ) 

Northern Division. j ' 

I, S. W. Burnham, Clerk of the Circuit Court of the 
United States, for said Northern District of Illinois, do 
hereby certify the above and foregoing to be a true and cor- 
rect copy of the Decree entered of record in said Court on 
the 17th day of April, A. D. 1899, in the cause wherein 
National Biscuit Company, is the complainant and Albert 
V. Thomas and Robert D. Clarke are the defendants, as the 
same appears from the original thereof now remaining in my 
custody and control. 

In Testimony Whereof, I have hereunto set my hand and 
affixed the seal of said Court, at my office in Chicago, in 
said District, this 18th day of April, A. D. 1899. 

S. W. Burnham, 

Clerk. 




(Etrcuif QLunxi of f fie Hmfet) ^iatts 

Southern District of New York 



NATIONAL BISCUIT COMPANY 

Complainant, 

HENRY D. BAKER and JOHN P. BAKER, 

Defendants 



IN EQUITY 



OPINION AND ORDER GRANTING 
INJUNCTION 



OFFIELD, TOWLE & LINTHICUM 
CHARLES K. OFFIELD 

For Complainant. 

BRIESEN & KNAUTH 
ARTHUR V. BRIESEN 

For Defendants. 



NATIONAL BISCUIT COMPANY vs. BAKER 





NATIONAL BISCUIT COMPANY vs. BAKER 



NATIONAL BISCUIT COMPANY vs. BAKER et al. 

(Circuit Court of the United States, Southern District New York. 
June 27, 1899.) 

Unfair Competitiox — Prelimixary Injunction. 

"Uneeda," as appHed to a biscuit, is a proper trade-mark; and the 
proprietor is entitled to an injunction against the use of ''Iwanta" 
by another manufacturer as the name of a similar biscuit put up and 
sold to the trade in packages so similar as to be calculated to deceive 
consumers. 1 

Motion for preliminary injunction against sellers of al- 
leged infringing goods; the action being defended by the 
Ward-Mackey Company, of Pittsburg, Pa., makers of the 
same. 

Charles K. Offield, for the motion. 

Arthur v. Briesen, opposed. 

LACOMBE, Circuit Judge. This case is too plain to waste 
many words over it, — the principles of trade-mark infringe- 
ment and of unfair competition have been so often discussed 
in this circuit. That ^'Uneeda, " as applied to biscuit, is a 
proper trade-mark, and that complainant is entitled to its 
exclusive use in that connection, is hardly disputed. That 
it has been most extensively advertised, presumably at great 
expense, is matter of common knowledge, and is asserted in 
the moving papers. Defendants present the usual volumin- 
ous bundle of affidavits by persons in the trade to the effect 
that in their opinion no one is likely to mistake defendants' 
biscuit for complainant's. As has been often pointed out 
before, it makes no difference that dealers in the article are 



1 As to what constitutes unfair competition, see note to Scheuer v. 
MuUer, 20 C. C. A. 165, and supplementary thereto, under same title, 
note to Lare v. Harper, 30 C. C. A. 376. 



» NATIONAL BISCUIT COMPANY rs. BAKER 

not deceived. Xo one expects that they will be. It is the 
probable experience of the consumer that the court considers 
Here, too, we have the manufacturer of the articles com- 
plained of, who explains, as usual, that, in adopting a trade 
name by which to identify his own product, he has been most 
'^careful not to trespass on any rights" of complainant, and 
that ''after considerable thought" he selected a name which 
should make the difference between his goods and complain- 
ant's ''distinct and plain, so that there could be no possibil- 
ity of mistake." It is a curious fact that so many manu- 
facturers of proprietary articles, when confronted with some 
well-advertised trade name or mark of a rival manufacturer, 
seem to find their inventive faculties so singularly unre- 
sponsive to their efforts to differentiate. Thus, in one case, 
with the word "Cottolene" before him, defendant's best 
effort at differentiation resulted in "Cottoleo," and "Mon- 
golia" seemed to another defendant entirely unlike "Mag- 
nolia." The manufacturer of the articles which defendants 
in the case at bar are selling seems to have had no better 
luck, for, with the word "Uneeda" before him, his device 
to avoid confusion was the adoption of the word "Iwanta." 
The incessant use of the personal pronouns in daily speech 
has associated in every one's mind the sounds represented 
by the letters "I" and "U"; the two words are of precisely 
the same length; both end with the same letter, "A"; and 
both express the same idea, namely, that the prospective pur- 
chaser's personal comfort would be promoted by the ac- 
quisition of a biscuit. There are, as also is usual, a num- 
ber of minor differences between the forms and the dress of 
the two packages, which are expatiated upon in the affi- 
davits and the brief; but no one can look at both packages 
without perceiving that there are strong resemblances, which 
could easily have been avoided had there been an honest 
effort to give defendants' goods a distinctive dress. Both 



NATIONAL BISCUIT COMPANY vs. BAKER 9 

name and dress are clearly calculated to mislead, and the 
statements that both were adopted with an eye single to 
differentiation strain the credulity of the court beyond the 
breaking point. Complainant may take a preliminary in- 
junction against the use of the trade-name '^ Iwanta, " and of 
the present style of package; also against similar colorable 
imitations of complainant's trade-name, ^'Uneeda/' and of 
his style of package. 

95 Fed. Rep., 135. 



10 NATIONAL BISCUIT COMPANY vs. BAKER 

INJUNCTION ORDER. 

United States Circuit Court, 
Southern District of New York. 



National Biscuit Company, 

Complainant 
vs. 
Henry D. Baker and John P 
Baker, 

Defendants.^ 



> In Equity. 



Complainant having moved the Court that a prelimin- 
ary injunction issue against the above-named defendants 
in accordance with the prayer of the bill of complaint here- 
in, and Charles K. Ofiield, Esq., of counsel for complainant, 
having been heard in support of the motion, and Arthur v. 
Briesen, Esq., of counsel for defendants, having been heard 
in opposition; it is, on motion of Ofiield, Towle & Linthi- 
cum, complainant's solicitors. 

Ordered that the said motion be and the same hereby is 
granted and that an injunction issue against the said defend- 
ants Henry D. Baker and John P. Baker and each of them 
and their respective agents, servants and employees and 
each of them enjoining and restraining them until the further 
order of this court from affixing, using or causing or permit- 
ting to be used or affixed to or upon any biscuits, crackers or 
other bakery products or packages thereof, handled or sold 
by them, or bought or procured to be sold by them, or for 
them, or either of them, or in which they are in any manner 
interested, the word ^' Iwanta" or '^ Uneecla", or against sim- 
ilar colorable imitation thereof, or from affixing to any pack- 
age of biscuit, crackers, or other bakery products, any wrap- 
per, label or other covering in substantial imitation of the 



NATIONAL BISCUIT COMPANY vs. BAKER 11 

wrapper, label and package of said complainant, or any simi- 
lar colorable imitation of complainant's style of package, so 
contrived as to lead to the belief or to be calculated to lead 
to the belief or to be liable to cause the public to believe that 
the biscuit or crackers contained in such package, wrapper 
or other covering are manufactured and sold by the com- 
plainant. 

Dated New York, Aug. 11, 1899. 

E. Henry Lacombe, 

U. S. Circuit Judge. 

(Endorsed) : United States Circuit Court, Southern 
District -of New York. — National Biscuit Company, Com- 
plainant, vs. Henry D. Baker and John P. Baker, Defend- 
ants. — Order. — Briesen&Knauth, Solicitors for Defendants, 
229 Broadway, Borough of Manhattan, New York. — U. S. 
Circuit Court, Filed Aug. 11, 1899, John A. Shields, Clerk. 



United States of America, ) 

r SS 

Southern District of Neav York, f ' 

I, John A. Shields, clerk of the Circuit Court of the 
United States in and for the Second Circuit and Southern 
District of New York, 

Do Hereby Certify that I have compared the preceding 
with the original Order granting Injunction in the cause 
entitled National Biscuit Company, Complainant vs. Henry 
D. Baker and John P. Baker, Defendants, on file and of rec- 



12 



NATIONAL BISCUIT COMPANY vs. BAKER 



ord in my office, and that the same is a true and correct 
transcript therefrom, and of the whole of said original. 

In Testimony Whereof, I have hereunto set my hand and 
affixed the seal of said court, at the City of New York, in 
the District and Circuit above-named, this 27th day of May, 
in the year of our Lord one thousand nine hundred and four, 
and of the Independence of the United States the one hun- 
dred and twenty-fourth. 

John A. Shields, 

Clerk. 




Northern District of Illinois 
Northern Division 



NATIONAL BISCUIT COMPANY 

Complainant, 
vs. 

THEODORE WEISE AND JOHN P. KENNEDY, 

Defendants. • 



ORDER, INJUNCTION AND ORDER 
MAKING INJUNCTION PERPETUAL 



OFFIELD, TOWLE & LINTHICUM 

For Com-plainant. 

ARCHIBALD CATTEL 

For Defendants. 



NATIONAL BISCUIT COMPANY vs. KENNEDY 15 

INJUNCTION ORDER. 

Circuit Court of the United States, 

Northern District of Illinois, 

Northern Division. 

July 5, 1900, 

Present, Hon. Christian C. Kohlsaat, District Judge. 



National Biscuit Company, 
25,598. vs. 

Theodore Weise and John P. 
Kennedy. 



Bill for Infringement 
of Trade-Mark and 
Equitable Rights. 



This case coming on to be heard upon motion for pre- 
liminary injunction upon pleadings and affidavits filed and 
exhibits referred to, and having been duly heard and con- 
sidered, it is ordered, adjudged and decreed as follows: 

First: That the said complainant has good title and right 
in and to the said trade-mark or name "Kennedy's," or 
'^ Kennedy's Biscuit" and "Kennedy's City Soda Crackers" 
as applied to bakery products, and in and to the particular 
and special label, package or carton associated with the sale 
thereof as identified by the bill of complaint and filed 
herein. 

Second: That the said defendants have violated and in- 
fringed upon said complainant's right, title and interest in 
and to said trade-name, marks or words " Kennedy's," "Ken- 
nedy's Biscuit" and "Kennedy's City Soda Crackers," and 
in and to the label, carton and package identified therewith. 

Third: That the said defendants, and each of them, their 
servants and agents, and all claiming or holding through or 
under them, be until further order of the court enjoined and 
restrained from in any manner whatsoever making use of 



16 NATIONAL BISCUIT COMPANY ^;s. KENNEDY 

the words ^^ Kennedy's/' ^'Kennedy's City Soda Crackers" 
or "Kennedy's Biscuit/' or any words substantially like the 
same as the name or designation, or as any part of the name 
or designation, of any bakery products whatsoever not by 
or for the complainant manufactured; and from in any man- 
ner whatsoever making use of the words "Kennedy's/' 
"Kennedy's City Soda Crackers" or "Kennedy's Biscuit/' 
or any words substantially like the same, as the name or 
designation^ or as any part of the name or designation, of 
any bakery products whatsoever not manufactured by or 
for the complainant, which shall be put up in carton like 
those hereinbefore described as the packages by the defend- 
ants used and availed of, and otherwise in every way from 
making use in connection with the manufacture or sale of 
bakery products whatsoever, not of the complainant's pro- 
duction, of packages which shall be so nearly like the com- 
plainant's packages hereinbefore described as to be calcu- 
lated to mislead; and otherwise in every way enjoining and 
restraining the said defendants from fraudulently making 
use of the words "Kennedy's," "Kennedy's City Soda 
Crackers" or "Kennedy's Biscuit" in connection with the 
sale of bakery products, and from doing any act or thing 
whatsoever that shall be calculated to cause any bakery 
products not manufactured by the complainant to be offered 
or sold as Kennedy's Biscuit or Kennedy's City Soda 
Crackers, or as bakery products or crackers manufactured 
by or for the complainant. 



NATIONAL BISCUIT COMPANY vs. KENNEDY 17 



Northern District of Illinois, 



Northern Division. ( 



I, Marshall E. Sampsell, clerk of the Circuit Court of the 
United States for said Northern District of Illinois, do hereby 
certify the above and foregoing to be a true and complete 
copy of the order entered of record in said court on the 
5th day of July, A. D. 1900, in the cause wherein 
National Biscuit Company is the complainant and Theo- 
dore Weise et at. are the defendants, as the same appears 
from the original records thereof now remaining in my 
custody and control. 

In Testimony Whereof, I have hereunto set my hand and 
affixed the seal of said court at my office in Chicago in said 
district, this 26th day of May, A. D. 1904. 

Marshall E. Sampsell, 

Clerk. 




18 NATIONAL BISCUIT COMPANY vs. KENNEDY 



INJUNCTION. 

Circuit Court of the United States of America, 

Northern District of Illinois, )■ ss. 

Northern Division. 

THE UNITED STATES OF AMERICA, 

To Theodore Weise and John P. Kennedy and to your 
Counselors, Attorneys, Solicitors, Trustees, Agents, Clerks, 
Employes, Servants and Workmen, and to each and every 
of you, Greeting: 

Whereas, It hath been represented to the Judges of our 
Chcuit Court of the United States for the Northern Division 
of the Northern District of Ihinois in Chanceiy sitting, on 
the part of National Biscuit Companj' , complainant, in its 
certain bill of complaint, exhibited in our said Circuit Court, 
on the Chancery side thereof, before the Judges of said Court, 
against you, the said Theodore Weise and John P. Kennedy; 
to be relieved touching the matters complained of. In which 
said bill it is stated, among other things, that you are com- 
bining and confederating with others to injure the com- 
plainant touching the matters set forth in said bill, and that 
your actings and doings in the premises are contrary to 
equity and good conscience. And it being ordered that a 
Writ of Preliminary Injunction issue out of said court, upon 
said bill, enjoining and restraining you, and each of 3"ou, as 
prayed for in said bill; We therefore, in consideration thereof, 
and of the particular matters in said bill set forth, do strictly 
command you, the said Theodore Weise and John P. Ken- 
nedy, your Counselors, Attornej^s, Solicitors, Trustees, 
Agents, Clerks, Employes, Servants and Workmen, and each 
and every of you, that you do absolutely desist and re- 
frain FROM m any manner whatsoever making use of the 



NATIONAL BISCUIT COMPANY vs. KENNEDY 19 

words ^'Kennedy's/' "Kennedy's City Soda Crackers" or 
'^ Kennedy's Biscuit/' or any words substantially like the 
same as the name or designation, or as any part of the name 
or designation, of any bakery products whatsoever not by 
or for the complainant manufactured; and from in any man- 
ner whatsoever making use of the words "Kennedy's," 
"Kennedy's City Soda Crackers" or "Kenned5^'s Biscuit," 
or any words substantially like the same, as the name or 
designation, or as any part of the name or designation, of 
any bakery products whatsoever not manufactured by or 
for the complainant, which shall be put up in a carton like 
those hereinbefore described as the packages by the defend- 
ants used and availed of, and otherwise in every way from 
making use in connection with the manufacture or sale of 
bakery products whatsoever, not of the complainant's produc- 
tion, of packages which shall be so nearly like the complain- 
ant's packages hereinbefore described as to be calculated to 
mislead; and otherwise in every way enjoining and restrain- 
ing the said defendants from fraudulently making use of the 
words "Kennedy's," "Kennedy's City Soda Crackers" or 
"Kennedy's Biscuit" in connection with the sale of bakery 
products; and from doing any act or thing whatsoever that 
shall be calculated to cause any bakery products not manu- 
factured by the complainant to be offered or sold as Ken- 
nedy's Biscuit or Kennedy's City Soda Crackers, or as bakery 
products or crackers manufactured by or for the complain- 
ant, until this Honorable Court, in Chancery sitting, shall 
make other order to the contrary. Hereof fail not, under 
penalty of what the law directs. 

To the Marshal of the Northern District of Illinois, to 
execute, and return in due form of law. 

Witness, the Hon. Melville W. Fuller, Chief Justice of the 
United States of America, at Chicago, in said District, this 
5th day of July, in the year of our Lord one thousand nine 



20 NATIONAL BISCUIT COMPANY vs. KENNEDY 

hundred and of our Independence the one hundred and 
twenty-fifth year. 

S. W. BURNHAM, 

Clerk. 




Northern District of Illinois, ) 

Northern Division. f ^^' 

I, Marshah E. Sampsell, Clerk of the Circuit Court of the 
United States for said Northern District of lUinois, do hereby 
certify the above and foregoing to be a true and complete 
copy of the injunction writ, filed in said court on 
the 8th day of July, A. D. 1904, in the cause wherein 
National Biscuit Company, is the complainant and Theodore 
Weise et al. are the defendants, as the same appears from 
the original now remaining in my custody and control. 

In Testimony Whereof, I have hereunto set my hand and 
affixed the seal of said Court at my office in Chicago, in said 
District, this 8th day of July, A. D. 1904. 

Marshall E. Sampsell, 

Clerk, 




NATIONAL BISCUIT COMPANY vs. KENNEDY 21 



ORDER MAKING INJUNCTION PERMANENT. 

Circuit Court of the United States, 
Northern District of Illinois, 
Northern Division. 
June 5, 1902. 

Present, Hon. Christian C. Kohlsaat, District Judge. 



National Biscuit Companj^, "^ 
25,598. vs. 

Theodore Weise and John P 
Kennedy. 



Bill for Infringement 
y of Trade-Mark and 
Equitable Rights. 



This cause coming on to be heard upon the pleadings as 
filed herein, Messrs. Offield, Towle & Linthicum appearing 
as solicitors and of counsel for said complainant, the 
National Biscuit Company, Mr. Archibald Cattel appearing 
as solicitor and of counsel for the said defendants, Theodore 
Weise and John P. Kennedy, and it appearing to the court 
that the defendants do not desire further to contest this 
action, and that they have settled with the complainant for 
the damages, profits and costs arising out of the acts com- 
plained of, and that nothing remains as to said litigation 
except as to the subject-matter of the injunction. It is 
therefore ordered, adjudged and decreed, as follows, viz.: 

That the Interlocutory injunction heretofore issued and 
served upon the defendants in this cause be, and the same 
hereby is, made perpetual, and that this decree be entered 
and stand as a final decree in the above cause. 



22 NATIONAL BISCUIT COMPANY vs. KENNEDY 



Northern District of Illinois, ) 
Northern Division. \ 



I, Marshall E. Sampsell, clerk of the Circuit Court of the 
United States, for said Northern District of Illinois, do 
hereby certify the above and foregoing to be a true and com- 
plete copy of the order entered of record in said court on 
the 5th day of June, A. D. 1902, in the cause wherein 
National Biscuit Company is the complainant and Theo- 
dore Weise et al. are the defendants, as the same appears 
from the original records thereof now remaining in my 
custody and control. 

In Testimonj^ Whereof, I have hereunto set my hand and 
affixed the seal of said court at my office in Chicago, in said 
District, this 26th day of May, A. D. 1904. 

Marshall E. Sampsell, 

Clerk. 




QTircuif Qlourf of ffje MmU^ .^fafBs 

Northern District of Ohio 
Eastern Division 



NATIONAL BISCUIT COMPANY 

Complainant, 

THE OHIO BAKING COMPANY, STEPHEN C. 
MORRIS and GEORGE E. COLLINGS, 

Defendants. 



IN EQTJITY 

No. 6131 



OPINION AND DECREE 



SQUIRE, SANDERS & DEMPSEY 
OFFIELD, TOWLE & LINTHICUM 
EARL D. BABST 

For Complainant. 

BANNING & BANNING 
BENJAMIN C. STARR 

For Defendants. 



24 NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY 






SODA ERA CKER5 



NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY 25 



NATIONAL BISCUIT COMPANY vs. OHIO BAKING CO. et al. 

(Circuit Court of the United States, Northern District Ohio, Eastern 
Division. December 21, 1900.) 

No. 6131. 

1. Unfair Competition — Imitation of Packages. 

While a defendant may have the right to use every one of the 
elements entering into complainant's trade-mark and packages if 
used separately, yet his use of the same in combination, for the evi- 
dent purpose of imitating in appearance complainant's packages, 
constitutes unfair competition. 

In Equity. On motion for preliminary injunction. For 
opinion on appeal, see 127 Fed., 116. 

Squire, Sanders & Dempsey, Offield, Towle & Linthicum, 
and Earl D. Babst, for complainant. 

Banning & Banning and Benjamin C. Starr, for defend- 
ants. 

WANTY, District Judge. In this case a m^otion for a 
preliminary injunction has heretofore been filed, and was 
argued the other day, and I have com.e to a conclusion in the 
matter. The bill in this case was filed to restrain the de- 
fendants from infringing the complainant's trade-mark and 
to restrain fraudulent competition in imitating the com- 
plainant's packages or cartons in size and color and general 
appearance. The defendants claim that they have the 
right to use the straight lines and curves in a trade-mark, 
that they have the right to use the word ''seal," that they 
have the right to use white lines on a red background, and 
that they have the right to use cartons of a particular size, 
and that they haA^e the right to use the different colors which 



fl Unfair competition, see notes to Scheuer v. Muller, 20 C. C. A. 
165; Lare v. Harper & Bros., 30 C. C. A. 376. 



26 NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY 

they have adopted for their packages, and that the com- 
plainant cannot appropriate any of these things so as to 
preclude others from their use. All of these claims of the 
defendants are true, but it is apparent, under the showing 
here, that the defendants deliberately sat down and m.ade 
their packages as like in general appearance to the com- 
plainant's packages as would be necessary to catch the cus- 
tomer and escape the courts. They had the right to use the 
background used by the complainant, they had the right 
to use clipped corners and the word ''Seal," they had the 
right to use any color that the complainant used for cartons, 
and they had the right to use packages of the size used by 
the complainant. But when they used all these things in 
combination, the object is too apparent to admit of argu- 
ment. The defendants put up a package which they s&y 
is exactly the size of complainant's package, because it con- 
tains the same quantit}^ of crackers, which, if put up in a 
convenient manner, necessarily compels the use of the same- 
size package. But this does not explain why on the largest- 
size package the defendants have the exact shade of red 
used by complainant, and have the white lettering of sub- 
stantially the same type, and on the next-size package, 
they have blue, like complainant's. Why did they not 
use blue on the largest-size package and red on the smaller? 
No one can read the pleadings and affidavits in this case and 
escape the conclusion that the defendants are endeavoring to 
appropriate the trade of the complainant by imitating, in its 
general effect, its seal and packages, and to escape the legal 
effect of such an attempt by making dissimilar minor details. 
The fraud is apparent, and the motion for a preliminary 
injunction will be granted. 

127 Fed. Rep., 160. 



NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY 27 



FINAL DECREE. 

The United States of America, i 
Northern District of Ohio, > ss. 
Eastern Division. ) 

At a stated term of the Circuit Court of the United States, 
within and for the Eastern Division of the Northern Dis- 
trict of Ohio, begun and held at the City of Cleveland, in 
said District, on the first Tuesday in April, being the 7th day 
of said month, in the year of our Lord one thousand nine 
hundred and three, and of the Independence of the United 
States of America the one hundred and twenty-seventh, 
to wit: On Friday, the 22'' day of May, A. D. 1903. 

Present; the Honorable Francis J. Wing, U. S. District 
Judge. 

Among the proceedings then and there had were the 
following;, to wit: 



National Biscuit Company, 
vs. 
The Ohio Baking Company, 
Stephen C. Morris, and George 
E. Collings. 



^ In Equity. 
613L 



This cause coming on to be heard upon pleadings and 
proof, and having been fully argued by counsel respectively 
for both parties litigant; Mr. Charles K. Offield, Mr. Andrew 
Squire, and Mr. Earl D. Babst, for Complainant; Mr. 
Thomas A. Banning, and Mr. Benjamin C. Starr, for De- 
fendants: And the court being fully advised, and having 
fully considered the same, orders, adjudges, and decrees 
as follows: 

1. That the said Com^plainant, the National Biscuit Com- 
pany's ''In-er-seal" Trade Mark is a good and valid Trade 



28 NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY 

Mark, and the complainant has full right and title thereto, 
and therein, as alleged in said bill of complaint filed herein. 

2. That the said defendants have infringed upon and 
violated said complainant's ^'In-er-seal" Trade Mark, as 
alleged in said bill of complaint, by putting up and selling 
baker}^ products in cartons or packages like those marked 
'^ Complainant's Exhibits Defendants' Infringing Packages 
Nos. 1, 2 and 3" and "Defendants' Exhibits Nos. 13, 14 and 
15." 

3. That the said defendants have violated complainant's 
equitable rights; in putting up, selling and offering for sale, 
cartons or packages of bakery products which present a gen- 
eral appearance as to collocation of size, shape, color, letter- 
ing, spacing and ornamentation, closely resembling com- 
plainant's several exhibits respectively referred to in the bill 
of complaint, and marked as "Complainant's Exhibits." 

4. That the said defendants, and each of them, their 
agents, servants, and emplo3'es, be and hereby are, enjoined 
until the further order of this court from 

a. Imitating or simulating complainant's "In-er-seal" 
Trade Mark, or manufacturing, handling, or selling cartons 
of bakery products having thereon any imitation of com- 
plainant's "In-er-seal" Trade Mark, calculated to mislead 
or deceive; like those marked Complainant's Exhibits De- 
fendants' Infringing Packages Nos. 1, 2 and 3, and De- 
fendants' Exhibits Nos. 13, 14 and 15, but this shall not be 
construed as restraining defendants from selling cartons or 
packages of bakery products with their, asserted Trade Mark 
thereon, provided such Trade Mark is so differentiated in 
general appearance and application from said complain- 
ant's Trade Mark that it is not calculated to deceive the 
ultimate ordinary purchaser. 

h. From putting up and selling, or offering for sale, the 



NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY 29 

particular forms of cartons or packages referred to in the 
bill of complaint, and identified therein as ^^Complainant's 
Exhibit Defendants' Infringing Packages Nos. 1, 2 and 3/' 
or any other form of packages or cartons, respectively, which 
shall, by reason of the collocation of size, shape, colors, let- 
tering, spacing and ornamentation, present a general appear- 
ance as closely resembling complainant's several exhibits 
respectively, referred to in the bill of complaint and marked 
as Complainant's Exhibits — as do the said defendants' 
respectively infringing packages Nos. 1, 2 and 3, but this 
shall not be construed as restraining defendants from selling 
packages or cartons of the size, weight and shape of com- 
plainant's packages, nor from using the respective colors as 
wrappers for such packages, provided such packages are so 
differentiated in general appearance from said complain- 
ant's respective packages that they are not calculated to 
deceive the ultimate ordinary purchaser. 

5. That the said complainant has a right to recover any 
and all profits accruing to the said defendants from the 
unlawful violation and infringement of said complainant's 
rights, and to recover all damages suffered by and accruing 
to said complainant by reason of the commitment of said 
unlawful and infringing acts, together with the costs herein 
to be taxed, and that the same may be referred to Irvin 
Belford, he being a suitable person as Master of this Court, 
and approved by the parties to take, state and report an 
account of such damages and profits under and in accord- 
ance with this decree, and that upon such accounting the 
testimony heretofore taken by either party in this case, may 
be read by either party, and referred to and considered by 
said master. 

In open court the defendant prayed an appeal, which 
was allowed and bond fixed at $500.00. 



30 



NATIONAL BISCUIT COMPANY 



OHIO BAKING COMPANY 



The United States, 
OF America. 



ss. 



I, Irvin Belford, Clerk of the Circuit Court of the United 
States, within and for the Northern District of the State of 
Ohio, do hereby certify that I have compared the within 
and foregoing transcript with the original decree entered 
upon the Journal of the proceedings of said Court in the 
therein entitled Cause, at the term, and on the day therein 
named; and do further certify that the same is a true, full 
and complete transcript and copy thereof. 

Witness, my official signature and the seal of said Court," 
at Cleveland, in said District, this 1st day of June, A. D. 
1903, and in the 127'' year of the Independence of the United 
States of America. 

Irvin Belford, 

Clerk. 
-i By Thomas M. Sherlock, 

Deputy Clerk. 




Hnif j^b Matts (Eircuti QLonxt of JlppealB 



Sixth Circuit 



OHIO BAKING COMPANY, STEPHEN C. 
MORRIS and GEORGE E. COLLINGS, 

Ap2JelJants. 

vs. 

NATIONAL BISCUIT COMPANY 

Appellee 



IN EQUITY 

No. 1232 



OPINION 



THOMAS A. BANNING 
EPHRAIM BANNING 
BENJAMIN C. STARR 

For Appellants. 

SQUIRE, SANDERS & DEMPSEY 
OFFIELD, TOWLE & LINTHICUM 
EARL D. BABST 

For Appellee. 



NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY 33 



OHIO BAKING CO. et al. vs. NATIONAL BISCUIT COMPANY 

(Circuit Court of Appeals of the United States, Sixth Circuit. 
January 21, 1904.) 

No. 1232. 

1 Trade Mark — Protection — Infringement. 

The right of the owner of a trade-mark to be protected in the 
exclusive use thereof is not dependent on the federal statute au- 
thorizing registration. 

2. Same — Nature of Relief — Unfair Domestic Competition. 

Where the ground for relief in a suit for infringement of a trade- 
mark was unfair competition in domestic commerce, and the cause 
of action alleged was ^n imitation of plaintiff's trade-mark on cartons 
used in local trade, and there was no allegation that complainant's 
foreign trade was injured by the acts complained of, the fact that 
the trade-mark was registered, and that complainant was entitled 
to protection under the federal statute with regard to foreign com- 
merce, was immaterial. 

3. Same — Evidence. 

Complainant's ^'In-er-seal" trade-mark, as known to the public, 
was printed in white letters on a vivid red back-ground of a peculiar 
shade, and applied to the ends of cracker and biscuit cartons, in 
which complainant's goods were packed for sale. Shortly there- 
after defendant conceived a trade-mark with the words "Factory 
Seal" printed on the same colored labels, which it applied to the 
ends of similar packages of its biscuits. At the time defendant 
adopted this trade-mark it knew complainant's crackers were the 
only ones sold with the red seal on the end of the cartons, and that 
its trade-marks were liable to deceive careless purchasers. Held, 
that defendant's trade-mark, when so printed and used, was an 
infringement on complainant's trade-mark, and should be enjoined. 

Appeal from the Circuit Court of the United States for 
the Northern District of Ohio. For opinion below, see 127 
Fed., 160. 

Thomas A. Banning, Ephraim Banning, and Benjamin C. 
Starr, for appellants. 

Squire, Sanders & Dempsey, Earl D. Babst, and Offield, 
Towle & Linthicum, for appellee. 

Before Lurton and Richards, Circuit Judges, and 
Thompson, District Judge. 



34 NATIONAL BISCUIT COMPANY rs. OHIO BAKING COMPANY 

RICHARDS, Circuit Judge. In March, 1900, the com- 
plainant below, the National Biscuit Company, was engaged 
in the manufacture and sale of bakery products, consisting 
of biscuits, crackers, etc. It owned and operated some 75 
plants, located in the leading cities of the United States, the 
products of which were put out in packages or cartons un- 
der different factory names, indicating their character and 
origin. For the purpose of identifying all these products, 
making them known to the public, and guarantying their 
authenticity, it adopted an arbitrary design or symbol known 
as the ^'In-er-seal" trade-mark for use on its cartons, and at 
a cost of hundreds of thousands of dollars advertised it 
throughout this country and the world as the mark b}^ which 
its goods might be recognized. Except for the use of some 
green and orange labels, which were soon abandoned, the 
''In-er Seal" trade-mark was printed in white letters upon 
a vivid red label with clipped corners, and applied to the 
ends of the cartons. The trade-mark was registered, the 
application being filed May 12, 1900. In the latter part of 
August, 1900, the defendant below, the Ohio Baking Com- 
pany, was engaged at Cleveland, Ohio, in making and selling 
bread and cakes. It had been so engaged for 17 years. At 
this time, having decided to enter upon the biscuit and 
cracker business, it employed one Miles, a former emplo}^ 
of the National Biscuit Company, and gave him charge as 
manager of the cracker department about to be established. 
AYithin three or four weeks afterwards it began to place its 
biscuits and crackers upon the market, packed in car- 
tons of substantially the same size as those used by the 
National Biscuit Company, and in some cases of the same 
color, stjde of ornamentation, and general appearance, all 
having on the ends, printed in white letters upon red labels 
with clipped corners, a fanciful figure, known as the 



NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY 35 

^'Factory Seal" trade-mark, which the Ohio Baking Com- 
pany, upon entering the cracker business, for the first time 
adopted and began to use. This trade-mark was registered, 
the application being filed October 9, 1900. For the pur- 
pose of comparison, the two trade-marks are shown in the 
following illustrations, the vivid red background being 
designated by the black background: 



36 NATIONAL BISCUIT COMPANY r.*. 



OHIO BAKING COMPANY 





NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY 37 

The original suit was brought by the National Biscuit 
Company, to restrain the Ohio Baking Company and its 
officers from advertising or selling its goods in any package 
having on it the '' In-er-seal " trade-mark or any imitation 
thereof, or in any package dressed in imitation of one used 
by the National Biscuit Company, and for an accounting of 
the profits made by such unfair competition. 

On an application for a preliminary injunction, Judge 
Wanty restrained the defendant below, first, from using the 
'^In-er-seal" trade-mark upon cartons containing its bakery 
products, as shown in certain exhibits, or advertising or sell- 
ing its bakery products in cartons containing thereon the 
"In-er-sear' trade-mark or any imitation thereof; and, 
second, from putting up and selling or offering for sale the 
particular cartons shown in certain exhibits, or any other 
cartons resembling the complainant's cartons as closely as 
they do. But this was not to be construed as restraining 
the defendant from selling cartons of the size, weight, and 
shape of the complainant's, nor from using the respective 
colors as wrappers, provided they were so differentiated in 
general appeara^nce as not to be calculated to deceive the 
ultimate ordinary purchaser. There was an appeal from 
Judge Wanty' s order, and this court reversed the portion 
respecting the use of the ^Tn-er-seal" trade-mark or any 
imitation thereof, but affirmed the rest. Upon the return 
of the case to the Circuit Court, an application was made 
to Judge Severens for an attachment for contempt against 
the defendant below for putting out certain cartons in viola- 
tion of the second part of Judge Wanty's order, but Judge 
Severens discharged the rule, holding that the cartons did 
not present a general appearance so closely resembling the 
complainant's exhibit mentioned in the restraining order 
as to come within its terms. Afterwards the case came on 



38 NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY 

for hearing before the Circuit Court, Judge Wing sitting, 
upon the pleadings and proof, and a decree vras rendered in 
favor of the complainant, holding: (1) That the 'Tn-er- 
seal" trade-mark is a good and valid trade-mark. (2) 
That the defendants have infringed this trade-mark b}^ 
putting up and selling bakery products in cartons like those 
shown in certain exhibits mentioned. (3) That the de- 
fendants have violated the complainant's equitable rights 
in putting up and seUing its bakery products in cartons 
which present a general appearance closely resembling those 
of the complainant as shown in certain exhibits. (4) That 
the defendants be enjoined: (a) From imitating the 
''In-er-seal" trade-mark, or making, handling, or seUing 
cartons of bakery products having thereon any imitation 
of the "In-er-seal" trade-mark, calculated to mislead or 
deceive, like those shown in certain exhibits: ''but this shall 
not be construed as restraining defendants from selling 
cartons or packages of bakery products with their asserted 
trade-mark thereon, provided such trade-mark is so differ- 
entiated in general appearance and application from said 
complainant's trade-mark that it is not calculated to deceive 
the ultimate ordinary purchaser." (b) From putting up 
and selling or offering for sale the particular forms of cartons 
shown in certain exhibits, or cartons resembling them so 
closely as to mislead or deceive: but this shall not be con- 
strued as restraining the defendants from selling cartons 
of the size, weight, and shape of the complainant's, but so 
differentiated in general appearance as not to be calculated 
to deceive the ordinary purchaser.- (5) That the com- 
plainant has the right to recover all profits accruing from 
the violation and infringement of its rights, and that the 
case be referred to a master to take and report an account 
of the damages and profits. From this decree an appeal has 
been taken to this court. 



NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY 39 

The right to be protected in the exclusive use of a trade- 
mark is not dependent on the federal statute authorizing 
the registration of certain trade-marks. It has been long 
recognized by the common law and enforced by the chancery 
courts of England and this country. The use of a trade- 
mark is to distinguish one's goods. No man has a right to 
use or imitate the trade-mark of another, and thus represent 
his goods as the goods of another. However broad the field 
of competition, it does not include the use of a rival's trade- 
mark, either directly or covertly, for the purpose of deceiv- 
ing the public, and marketing his own goods as those of his 
rival. The one question of fact in this case is whether the 
'^ Factory Seal" trade mark, when printed in white letters 
upon a red label with clipped corners, and applied to the 
ends of cartons containing bakery products, bears such a 
resemblance to the '^In-er-seal" trade-mark, when similarly 
applied, as to deceive the ordinary purchaser, and lead him to 
believe he is purchasing the goods of the National Biscuit 
Company, when in fact he is getting the goods of the 
Ohio Baking Company. McLean v. Fleming, 96 U. S., 255, 

24 L. Ed. 828; Manufacturing Co. v. Trainer, 101 U. S., 65, 

25 L. Ed., 993; Coats v. Merrick Thread Co., 149 U. S., 562, 
13 Sup. Ct., 966, 37 L. Ed., 847. We have made a careful 
inspection of the cartons and trade-marks of the respective 
companies, and are satisfied not only that the ''Factory 
Seal" trade-mark as applied is calculated to mislead and 
deceive the ordinary purchaser, but that it was designed, 
adopted, and used for that purpose. Its use was a part 
of the ''cracker cam[>aign" planned in advance. The 
National Biscuit Company's crackers were the only ones 
with a red seal on the end of the cartons. The defendants 
below knew this. And they knew also that crackers are sold 
for the most part over the counter to careless buyers, who 



40 NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY 

are not apt to examine the carton carefully, but likely to 
carry in mind some one distinguishing feature, such as a red 
seal on the ends. The crackers of the National Biscuit 
Company are put out under many names. Thus the plant 
at Toledo was called the Worts-Kirk-Bigelow plant, one at 
Chicago the Kennedy, another the Bremner, and so on. 
The name of the factory would mean nothing, the presence 
of the red seal everything to the servant girl or child sent 
to the grocery for a box of ^'In-er-seal" crackers. The 
careless purchaser asking for a box ''of those red seal crack- 
ers" would take the "Factory Seal" goods, thinking he was 
getting the "' In-er-seal " goods. 

But it is insisted that this is a suit on a registered trade- 
mark, and that a trade-m.ark cannot be extended beyond 
the limits fixed in the registration. This is not, however, a 
suit on a registered trade-mark. Neither the allegations nor 
the proof would entitle the complainant to relief under the 
federal act. Warner v. The Searle & Hereth Co., 191 U. S., 
195, 24 Sup. Ct., 79, 48 L. Ed.— . There is no evidence 
showing that the trade of the National Biscuit Company 
with foreign countries was injured by the acts complained 
of. The ground of the relief sought is unfair competition 
in domestic commerce — the fraudulent imitation of the com- 
plainant's trade-mark and cartons for use in local trade. 
Conceding, as Mr. Justice Fuller says, in Watch Co. v. Watch 
Case Co., 179 TJ. S., 666, 674, 21 Sup. Ct., 270, 45 L. Ed., 
365, that in this class of cases "such circumstances must be 
made out as will show wrongful intent in fact, or justify 
that inference from the inevitable consequences of the act 
complained of," they are present in ample measure in the 
record. The trade-mark which the court is asked to pro- 
tect is therefore, so far as this suit is concerned, a com.mon- 
law trade-mark, and its limits are to be determined by its ap- 



NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY 41 

plication and use. As Mr. Justice Shiras said in KohlerMfg. 
Co. V. Beeshore, 59 Fed., 572, 575, 8 C. C. A., 215, 218: ^' We 
are not willing to affirm the proposition that the registra- 
tion in the Patent Office of a certain name or phrase as a 
trade-mark * * * ^iii ^^ all cases preA^ent or estop 
the owner from adopting and using another name or phrase 
as a trade-mark." The legal effect of the registry of a 
trade-mark being restricted to foreign commerce and that 
with the Indian tribes, it w^ould seem that as to domestic 
conunerce a person might adopt and use a different trade- 
mark than that registered. Now, the trade-mark actually 
used — the ^'In-er-seal" trade-mark, as known to the public 
— was printed in white letters upon a vivid red background 
of a peculiar shade. Before the defendants began to place 
their goods upon the m.arket, this vivid red color had be- 
com^e associated with the "In-er-seal" trade-mark. The 
defendants below knew this when they put their ^'Factory 
Seal" trade-mark upon the vivid red background of pre- 
cisely the same shade. While it is true no one has the right 
to monopolize a particular color, yet the courts have repeat- 
edly held that a person may be restrained from using a 
particular color, in combination with other things, to mis- 
lead the public, and market his goods as those of another. 
Garrett v. T. H. Garrett & Co., 78 Fed., 472, 24 C. C. A., 173 
Fairbank Co. v. Bell Mfg. Co., 77 Fed., 869, 23 C. C. A., 551 
Hires Co. v. Consumers' Co., 100 Fed. 809, 41 C. C. A., 71 
Morgan Co. v. Whittier Co. (C. C), 118 Fed., 657; Cohen v. 
Delavina (C. C), 104 Fed. 946. We are satisfied that the 
^'Factory Seal" trade-mark, when printed on the vivid red 
background and applied to the ends of a cracker or biscuit 
carton, is "an infringement of the ^'In-er-seal" trade-mark, 
and should be enjoined. 

It is submitted that the decree of the Circuit Court en- 



42 NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY 

joining tlie use of any imitation of the ^'In-er-seal'" trade- 
mark is inconsistent with the order of this court reversing 
the first part of Judge AVanty's restraining order respecting 
the trade-mark. But Judge Wanty's order restrained the 
use of the "Factory Seal" trade-mark in any manner what- 
soever in connection with biscuit or cracker cartons^ while 
the decree of the Circuit Court provides that it may be used 
when so differentiated in general appearance and applica- 
tion from the '' In-er-seal" trade-mark as not to be calcu- 
lated to deceive the ultimate ordinary purchaser. So that 
in affirming this decree, it is not necessary to prohibit the 
use in any manner whatsoever of the ^'Factory Seal" trade- 
mark, but only its use in a way calculated to mislead and 
deceive. 

But, however this may be, the case is now before us upon 
the merits, which we have carefully examined, and we are 
satisfied that the manner in which the " Factory Seal" trade- 
mark has been used is calculated to mislead and deceive, 
and constitutes an infringement of the "In-er-seal" trade- 
mark. 

The judgment of the Circuit Court is affirmed. 
127 Fed. Rep., 116. 



;§uprBmB QlDurf of tljB Hnif rii states 



October Term, 1904 



OHIO BAKING COMPANY, STEPHEN C. 
MORRIS and GEORGE E. COLLINGS, 

Petitioners, 



NATIONAL BISCUIT COMPANY 

Resvondent. 



No. 382 



PETITION FOR WRIT OF CERTIORARI 
AND ORDER DENYING PETITION 



THOMAS A. BANNING 
EPHRAIM BANNING 

For Petitioners. 

CHARLES K. OFFIELD 
EARL D. BABST 

For Respondent. 



national biscuit company vs. ohio baking company 45 

Supreme Court of the United States. 
October Term, A. D. 1904. 



The Ohio Baking Company, Stephen*^ 
C. Morris and George E. Collings, 
Petitioners 



On Petition for Writ of 

Certiorari directed to 

the United States Cir- 

VS. j cuit Court of Appeals 



National Biscuit Company 

Respondent. J 



' 



for the Sixth Circuit. 



PETITION FOR WRIT OF CERTIORARI. 



To the Honorable the Chief Justice and Associate Justices of 
the Supreme Court of the United States: 

The petition of the Ohio Baking Company, a corpora- 
tion organized and existing under and by virtue of the 
laws of the State of Ohio, and Stephen C. Morris, treasurer 
and general manager of said company, and George E. Col- 
lings, president of said company, respectfully represents 
and shows unto your Honors as follows: 

1. That about the 1st day of March, 1900, the 
National Biscuit Company adopted what is generally known 
as its "InerSeal" trade-mark — being the misspelled words 
^' inner seal," indicating that the package was sealed on the 
inside, and a purely arbitrary figure or design — for use 
on various kinds of bakery products including biscuits, 
crackers, wafers, cakes, bread, snaps, jumbles, etc. The 
trade-mark has usually been printed on seals or labels 
which have been applied to the boxes, packages or cartons 
in which the goods were put up for the market. This seal 
or label has usually been applied to the end of the carton 
or package. The trade-mark has been printed on orange, 
green or red colored seals or labels. The trade-mark 



46 NATIONAL BISCUIT COMPANY is. OHIO BAKING COMPANY 

printed on one of the red end labels or seals appears as 
follows: 




2. That in the bill of complaint charging infringement 

of the complainant's ''Iner Seal'' trade-mark, in the fourth 

paragraph of the bill, the characteristics, peculiarities, 

and distinguishing things and features of such ^'Iner Seal" 

trade-mark are stated and alleged to be the following: 

^'An oval-shaped figure separated centrally and horizon- 
tally in the direction of its greatest length by a bar, from 
which there rises centrally and at right angles thereto a 
perpendicular bar, which near its upper end is intersected 
by double horizontal cross-bars, thus forming what might 
be designated as a ^^double-T-shaped" figure or cross tree, 
while within said oval-shaped sectioji and above the hori- 
zontal dividing-bar and to the left of the perpendicular 
intersecting bar appear the letters ''I N" and on the 
opposite side of said perpendicular intersecting bar and above 
said horizontal division-bar appear the letters ''E R" the 
lower section of said oval-shaped figure having therein the 
word ^' Seal." 

3. That the National Biscuit Company, registered its 



NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY 47 

''Iner SeaP' trade-mark in the Patent Office, the certificate 
of registry being dated September 18, 1900, and numbered 
35,108, on an application filed May 12, 1900. The certi- 
ficate of registry of such trade-mark will be found in the 
Record, following page 160. In the specification of such 
registration, which was sworn to, the National Biscuit 
Company stated the things in which the trade-mark con- 
sisted as follows: 

''Said trade-mark consists of an arbitrarily selected 
design or symbol representing an oval-shaped figure separ- 
ated centrally and horizontally in the direction of its greatest 
length by a bar, from which there rises centrally and at 
right angles thereto a perpendicular bar, which near its 
upper end is intersected by double horizontal cross-bars, 
thus forming what might be designated as a '' double-T- 
shaped" figure or cross-tree, while within said oval-shaped 
section and above the horizontal dividing-bar and to the 
left of the perpendicular intersection bar appear the letters 
''I N" and on the opposite side of said perpendicular 
intersecting bar and above said horizontal division-bar 
appear the letters "¥. R" the lower section of said oval- 
shaped figure having therein the word ''Seal." 

And afterwards in said specification, after stating that 
the trade mark was not confined to the size of the end 
labels, nor to their application to the end of the package, 
nor to the shape of the label, nor to the size of the letters 
and figures, nor to the color of the letters and figures, nor 
to the color of the label or background, nor to the style 
of the letters, nor to the color of the border of the figure 
or the bars, nor to a white color for the letters or bars, the 
National Biscuit Company declared the real and essential 
features of the trade-mark in the following words: 

"The essential and paramount feature of said trade- 
mark consisting of an oval -shaped figure divided centrally 
and horizontally in the direction of its greatest length 
by a bar from which extends a perpendicular bar which 
is intersected near its upper end by two horizontal cross- 



48 NATIONAL BISCUIT COMPANY is. OHIO BAKING COMPANY 

bars, while within said oval-shapecl figure and above 
said central horizontal bar appear the letters ^'I N" and 
'^E R, " while below said horizontal dividing-bar appears 
the word "Seal." " 

4. That about the 1st day of August, 1900, your peti- 
tioner, the Ohio Baking Company, adopted what is gen- 
erally known as its "Factory Seal" trade-mark, consisting 
of the monogram word "Ohio," being the designating or 
localizing word of its corporate name. The words "factory 
seal" indicate that the package was filled and sealed at 
the factory so as to place responsibility in case the goods 
are found defective. The trade-mark has usually been 
applied to cartons or packages containing bakery products 
by printing it upon the end seals. The foundation color 
of these end seals or labels from the commencement has 
been red. A sample of such end seals is submitted as 
follows : 




NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY 49 

5. That your petitioner, the Ohio Baking Company, also 
registered its ''Factory Seal" trade-mark in the Patent 
Office, the certificate of registry being dated December 18, 
1900, and numbered 35,597, on an application filed October 
9, 1900. The certificate of registry of such trade-mark 
will be found in the back of the record. 

6. That in December, 1900, the National Biscuit Com- 
pany filed its bill of complaint in the United States Cir- 
cuit Court for the Northern District of Ohio, Eastern 
Division, charging your petitioners with infringement of 
its "Iner Seal" trade-mark, applied to packages and cartons 
of crackers and bakery products, by the use, by the Ohio 
Baking Company, of its ''Factory Seal" trade-mark, the 
monogram word "Ohio," as shown in the sample above. 

7. That in January, 1901, a preliminary injunction order 
was entered by his Honor, Judge George P. Wanty, re- 
straining your petitioners, first, "from applying or using 
complainant's 'Iner Seal' trade-mark, in any manner 
whatsoever, upon or in connection with bakery products," 
as shown in certain infringing packages 1, 2 and 3; and, 
secondly, from putting up or selling cartons or packages 
like the packages 1, 2 and 3 or others "which shall, by 
reason of the collocation of size, shape, colors, lettering, 
spacing and ornamentation, present a general appearance 
closely resembling complainant's several exhibits res- 
pectively" as did the packages 1, 2 and 3, but at the same 
time the order provided that "this shall not be construed 
as restraining defendants from selling packages or cartons 
of the size, weight and shape of complainant's packages, 
nor from using the respective colors as wrappers for such 
packages, provided such packages are so differentiated 
in general appearance from said complainant's respective 
packages that they are not calculated to deceive the ultimate 
ordinary purchaser." (Record, 141-2.) 



50 NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY 

8. That an appeal was taken from the injunction order 
entered by Judge Wanty on an assignment of errors, ap- 
pearing at page 143 of the record, which appeal was argued 
in the United States Circuit Court of Appeals for the Sixth 
Circuit in due course, resulting in an order by said Court of 
Appeals reversing the decree of Judge Wanty, so far as 
the infringement of the trade-mark was concerned, but 
affirming his decision so far as simulating complainant's 
wrappers was concerned. In accordance with such order, 
a mandate was issued and filed in the court below on the 
24th day of June, 1901, as and for its judgment in the case. 
(Record, 147.) 

9. That from the entry of the order of injunction by 
Judge Wanty until the 24th day of June, 1901, when the 
mandate was filed in the court below, your petitioner, the 
Ohio Baking Company, discontinued the use of its end 
seals containing its trade-mark — the monogram word 
^^Ohio" — but when the mandate was filed on the 24th 
of June, 1901, it again began to use the same trade-mark^ 
the monogram word ^'Ohio" — on its end labels precisely 
the same in every respect as it had used them before the 
decision of Judge Wanty; but it used such end labels 
and trade-marks on packages differing in the coloring and 
ornamentation of their wrappers from the original packages 
1, 2 and 3, which had been enjoined. This was the only 
change made — the change in the wrappers. 

10. That thereupon the National Biscuit Company 
moved before his Honor Judge Henry F. Severens, who 
was one of the judges who had heard and decided the case 
in the Court of Appeals, to have your petitioners attached 
for contempt of court; and the charge and denial of con- 
tempt were argued before him, and on the 24th day of 
August, 1901, an order was entered by him discharging 
the rule to show cause, etc. The opinion of Judge Severens 



NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY 51 

will be found at page 149 of the Record, and the order 
entered under such opinion will be found at page 150. 

11. That thereupon proof for final hearing was taken by 
the parties respectively and the cause brought on for argu- 
ment before his Honor Judge Francis J. Wing, on the 27th 
day of March, 1903. Judge Wing ordered a decree to be 
entered against your petitioners both as to the infringement 
of the trade-mark and as to the simulation of the wrappers 
of the cartons or packages. This decree was entered on the 
22nd day of May, 1903, and will be found beginning at page 
153 of the Record. A perpetual injunction was granted 
restraining your petitioners both as to the trade-mark and 
as to the simulation, and the case referred to a Master 
for an assessment of damages and profits. 

12. That your petitioners thereupon prayed an appeal 
from the order and decision of Judge Wing to the United 
States Circuit Court of Appeals for the Sixth Circuit, in 
which court the appeal was duly argued, and on or about 
the 21st day of January, 1904, decided by said court, 
affirming Judge Wing's decision. (Rec. 170; 127 Fed. 
Rep., 116.) 

13. That your petitioner attach hereto and submit here- 
with, as a part hereof, a certified printed copy of the record 
and the opinion of the United States Circuit Court of Appeals 
affirming the decision of Judge Wing, as the same are on 
file in the office of the clerk of the United States Circuit 
Court of Appeals for the Sixth Circuit. 

14. That your petitioners have been aggrieved, and, as 
they believe, a miscarriage of justice has been caused in this 
case: 

By the confusion into which the Circuit Court and the 
Court of Appeals appear to have fallen as to the laiv relating 
to trade-marks proper and the laiv governing unfair compe- 
tition: 



O'l NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY 

By the conclusion of the Court of Appeals that the suit was 
not founded on the complainant's registered trade-marl\ and, 
therefore, not subject to the same rules of construction as govern 
registered trade-marks; 

By giving to the complainant's " Iner SeaV trade-mark, 
both in the Circuit Court and in the Court of Appeals, a 
broader construction than the complainant's pleadings and 
registration justified, inasmuch as the bill of complaint and 
the registration both stated that it consisted in certain things 
and features; 

By apparently considering that the bill was for unfair 
competition in trade rather than for infringement of a tech- 
nical trade-mark, and yet enjoining your petitioners as for 
the infringement of a technical trade-mark : 

By protecting the complainant in the use of its trade-mark 
when ''printed in white letters upon a vivid red background 
of a peculiar shade," notwithstanding the statements of the 
complainant's registration that the color of the end labels or 
seals was immatericd: 

By giving the complainant a practiced monopoly of the 
color red as a background for end seeds or labels; 

By finding infringement of the ''Iner SeaV^ trade-mark 
because the "Factory SeaV trade-mark was printed in white 
letters on a red background; 

By protecting the complainant in the use of red for its end 
seals or labels notwithstanding it was not using red end seals 
exclusively at the time the Ohio Baking Company began to use 
red end seeds or labels, but was using other colors as well; 

By not holding that the complainant had disentitled itself 
to relief in equity for unfair competition in view of the evi- 
dence that it had adopted "substantially all colors'' (Q. 24, 
Rec. 13) for the wrappers of its cartons or packages, thus 
seeking to monopolize all colors; 

By holding that the "Factory SeaV trade-mark when 



NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY 53 

printed on a red background and applied to the ends of cracker 
or biscuit cartons ivas an infringement of the " Iner Seal" 
trade-mark, thus attaching importance to the color of the back- 
ground on the trade-mark branch of the case; 

By attaching importance in the trade-mark branch of the 
case to the manner in lohich the "Factory SeaV trade-mark 
had been used; 

By holding that there had been an improper simulation 
of the complainant's wrappers in vieio of the fact that the 
complainant, in order to match up the color and appearance 
of the defendant' s packages 1, 2 and 3, held to be an im- 
proper simulation, was obliged to bring in packages from 
its Chicago and Toledo factories; 

By holding that the "careless purchaser asking for a box 
'of those red seal crackers' would take the 'Factory Seal' 
goods, thinking he was getting the ' Iner Seal' goods," thus 
making the action of a careless person instead of an ordi- 
nary purchaser determinative of the probability of deception; 

By disregarding the fact that the red color, white figures 
and letters, clipped corners, size of seal, etc., were shown by 
the evidence to be matters of utility instead of mere fanciful 
or arbitrary features; 

By applying the abstract principle "that as to domestic 
commerce a person might adopt and use a different trade- 
mark than that registered" to this case where the complainant 
has not adopted and has not used a "different" trade-mark, 
but identically the one registered; and 

By affirming the decision of Judge Wing and in not re- 
versing such decision. 

Wherefore, your petitioners pray that this Honorable 
Court will take cognizance of the matters herein set forth 
and referred to and will grant unto your petitioners a writ 
of certiorari requiring said cause and the record thereof 
to be certified to it by the United States Circuit Court of 



54 XATIOXAL BISCUIT COMPAXY v.j. OHIO BAKIN'O COMPAXY 

Appeals for the Sixth Chcuit. for its review and deter- 
mination, pursuant to the provisions of the statute in such 
case made and proAdded. and that your petitioners may 
liave sucli other and further reUef in the premises as the 
nature and circumstances of their case may require. 
And yoin' petitioners wiU ever pray. etc. 

The Ohio BAKI^XT Co., 
George E. Collixgs, 
Stephex C. Morris. 



United States of America, Xorthern District of Ohio, State of 
Ohio. Cuyahoga County, ss: 

George E. CoUings. president of tlie Oliio Baking Com- 
pany, one of the aboAX named petitioners, being duly 
sworn, upon oath says that he has read the foregoing peti- 
tion and knows the contents thereof and that the same is 
true in substance and matter of fact. 

George E. Collixgs. 

Subscribed and .sworn to before me this 2nd day of Sep- 
tember, 1904. 

F. T. Sholes. 
(seal.) Xotary Public. 

AVe hereby certify that the foregoing stated grounds in 

support of the petition for a writ of certiorari in the aboA'e 

entitled cause, are. in our opinion, well founded in point 

of law. 

Thomas A. Baxxixg. 

Ephraim Baxxixg. 

Counsel for Petitioners. 



NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY 55 

ORDER DENYING PETITION. 

Supreme Court of the United States. 
No. 382, October Term, 1904. 

The Ohio Baking Company et al., 
Petitioners, 
vs. 
National Biscuit Company, 

On petition for writ of certiorari to the United States 
Circuit Court of Appeals for the Sixth Circuit. 

On CONSIDERATION of the petition for a writ of certiorari 
herein to the United States Circuit Court of Appeals for the 
Sixth Circuit, and of the argument of counsel thereupon had, 
as well in support of as against the same, It is now here 
ordered by the Court that said petition be, and the same is 
hereby denied. 

October 17, 1904. 

A true copy. 
Test: James H. McKenney, 

Clerk of the Supreme Court of the United States. 




195 U.S., 630. 



(Etrcuif aTourf of ffje Bntoti .^fafes 



Western District of New York 



NATIONAL BISCUIT COMPANY n 

Complainant, 
vs. 

WILLIAM DEININGER, HENRY E. DEININ- 
GER, LOUIS C. DEININGER and FREDER- > 
ICK C. J. DEININGER, co-partners, and doing 
business under the firm name and style of 
DEININGER BROTHERS, 

Defendants, y 



IN EQUITY 



DECREE AND INJUNCTION 



CHARLES K. OFFIELD 
ADELBERT MOOT 
EARL D. BABST 

For Complainant. 

FREDERICK F. CHURCH 

For Defendants. 



58 



NATIONAL BISCUIT COMPANY vs. DEININGER 





NATIONAL BISCUIT COMPANY vs. DEININGER 59 

FINAL DECREE. 

United States Circuit Court. 

Western District of New York. 

National Biscuit.Company 
vs. 
William Deininger, Henry E. Deininger, 

Louis C. Deininger, and Frederick C. )^ Final Decree. 
J. Deininger, copartners and doing | 
business under the firm name and | 
style of Deininger Brothers. J 

This cause coming on to be heard upon the pleadings as 
filed, Mr. Charles K. Offield appearing in behalf of the com- 
plainant and Mr. Frederick F. Church in behalf of defend- 
ants, and it appearing to the Court that said defendants do 
not desire further to contest or defend this action, but admit 
the truth of the allegations in the bill of complaint; and the 
said defendants have tendered and paid the costs to the date 
of this cause as taxed by the clerk, and also have settled and 
paid the damages caused to complainant by the commit- 
ment of the unlawful acts as set forth in the bill of com- 
plaint; and that no remaining question is presented except 
the matter relating to the granting of an injunction. It is 
therefore ordered, adjudged and decreed that an injunction 
issue under and in accordance with the allegations of, and 
the prayer of, the bill of complaint filed herein, and that 
this decree and order be, and is final. 

John R. Hazel, 

U. S. J. 

Endorsed: Circuit Court of IT. S., Western Dist. of N. Y. 
National Biscuit Company agst William Deininger et al. 
Final Decree. Adelbert Moot, Counsel for plaintiff, 45 Erie 
County Savings Bank Building, Buffalo, N. Y. IJ. S. Cir- 
cuit Court, Western Dist. of N. Y. Filed Jul. 30, 1901. 
Harris S. Williams, Clerk. 



60 NATIONAL BISCUIT COMPANY is. DEININGER 



United States of America, 
Western District of New York. ^^' 

I, Harris S. Williams, Clerk of the Circuit Court of the 
United States, for the Western District of New York, do 
hereb}^ certify that I have compared the annexed copy of 
Final Decree in re National Biscuit Company vs. William 
Deininger et al. with the original entered and on file in this 
office, and that the same is a correct transcript therefrom, 
and of the whole of said original. 

And I further certify that I am the officer in whose custody 
it is required by law to be. 

In Testimony Whereof, I have caused the seal of the said 
court to be affixed at the City of Buffalo, in said District, 
this 27th day of May, A. D. 1904. 

Harris S. Williams, 

Clerk. 




NATIONAL BISCUIT COMPANY vs. DEININGER 



61 





62 NATIONAL BISCUIT COMPANY vs. DEININGER 



INJUNCTION. 



United States of America, 
Western District of New York. 



ss. 



The President of the United States, to William Deininger, 
Henry E. Deininger, Louis C. Deininger and Frederick 
C. J. Deininger, and each of them, and their and each of 
their servants, agents, and employes and all claiming or 
holding through or under them, Greeting: 

Whereas, the National Biscuit Company has lately ex- 
hibited its bill of complaint against the said William Dein- 
inger, Henry E. Deininger, Louis C. Deininger and Fred- 
erick C. J. Deininger, copartners and doing business under 
the firm name of Deininger Brothers, as defendants, in the 
Circuit Court of the United States for the Western District 
of New York, before the Judges of said Court, praying to be 
relieved touching the matters therein complained of; and 

Whereas, by a final decree of said court made on the 30th 
day of July, 1901, it was ordered that a writ of injunction 
issue under the seal of said Court under and in accordance 
with the allegations of, and the prayer of said bill of com- 
plaint, 

Now, Therefore, in consideration of the premises, you, 
the said William Deininger, Henry E. Deininger, Louis C. 
Deininger and Frederick C. J. Deininger, and each of you, 
and your, and each of your, servants, agents and employes, 
and all claiming or holding through or under you or them, 
are hereby strictly commanded and enjoined under the pains 
and penalties which may fall upon you and each of you in 



NATIONAL BISCUIT COMPANY vs. DEININGER 63 

case of disobedience, that you and each of you, do abso- 
lutely desist and abstain, forthwith and forever, from the 
manufacture, use or sale of bakery products containing the 
complainant's ribbon-tying trade-mark, label, and design, 
upon any carton for bakery products having a wr^ipper or 
label thereon simulating the ribbon-tying design and effect 
disclosed by complainant's wrapper and label, and do abso- 
lutely desist and abstain forthwith and forever from manu- 
facturing, using or selling labels or cartons in, or for, or with, 
bakery products containing the red end seal, sign or symbol 
of complainant, having therein circular and straight white 
lines arranged practically at right angles to each other; and 
from in any manner whatsoever, handling, advertising, or 
selling bakery products or packages containing thereon com- 
plainant's trade-marks or imitation or simulation thereof, 
or from using complainant's said trade-marks or packages 
or any imitation thereof upon any wrapper, package, 'box 
or carton, or by any means that may be adopted in the sale 
of their bakery products of any description; or any imita- 
tion of complainant's said trade-marks orpackages, labels or 
wrappers that may be in any way calculated to deceive or 
mislead, and otherwise do absolutely desist and abstain, 
forthwith and forever, in every way, from fraudulently 
using complainant's trade-marks, packages, labels or wrap- 
pers, or any imitation or simulation thereof, in the sale of 
bakery products, or from violating or infringing the equit- 
able rights of complainant in the premises herein complained 
of and set forth. 

Witness the Honorable Melville W. Fuller, Chief Justice 
of the United States of America, at the City of Buffalo, 
N. Y., in said district, this 5th day of February, one thou- 



64 



NATIONAL BISCUIT COMPANY is. DEININGER 



sand nine hundred and two, and of our Independence, the 
one hundred and twenty-sixth. 

Harris S. Williams, 

Clerk. 




Offield, Towle &-Linthicum, 

Solicitors for Complainant. 



United States of America, 
Western District of New York 



,! 



ss. 



I, Harris S. Williams, clerk of the Circuit Court of the 
United States, for the W^estern District of New York, do 
hereby certify that I have compared the annexed copy of 
Injunction in re National Biscuit Co. vs. William Deininger 
et al. with the original entered and on file in this office, and 
that the same is a correct transcript therefrom, and of the 
whole of said original. 

And I further certify that I am the officer in whose cus- 
tody it is required by law to be. 

In Testimony Whereof, I have caused the seal of the said 
court to be affixed at the City of Buffalo, in said District, 
this 27th day of May, A. D. 1904. 

Harris S. Williams, 
^^/^::X ' Clerk. 




(Eircuif QLonxt of iljt HnifBt) ^iatss 

Northern District of Illinois 
Northern Division 



NATIONAL BISCUIT COMPANY ^ 

Complainant, 
vs. 

DAKE CRACKER COMPANY, J. A. BERNARD 
HOSSACK, WILLIAM P. FENNELL and 
ABEL L. ALLEN, 

Defendants. J 



IN EQUITY 



OPINION, INJUNCTION AND ORDER 
MAKING INJUNCTION PERPETUAL 



OFFIELD, TOWLE & LINTHICUM 
EARL D. BABST 

For Complainant. 

W. p. FENNELL 

For Defendants. 



NATIONAL BISCUIT COMPANY vs. DAKE CRACKER COMPANY 67 



OPINION. 

In the United States Circuit Court, 

Northern District of Illinois, • No. 26,043. 

Northern Division. 

KOHLSAAT, District Judge. 

This matter comes on for hearing upon complainant's 
motion for a prehminary injunction restraining defendant 
corporation and the individual defendants from the use of 
the word "Dake" either alone or in connection with other 
words, upon or with reference to crackers or other bakery 
products. 

I am of the opinion that the moving papers establish the 
property right in complainant to the use of the word ^'Dake" 
in connection with bakery products. Several defenses are 
interposed among which is that of abandonment. This I 
consider an affirmative defense, the burden of establishing 
which is upon defendants. The affidavits on this point are 
conflicting, but I deem the showing as to continued, though 
diminished, use by complainant, not overcome by defend- 
ants' affidavits. 

The other defenses I do not think available. 

A preliminary injunction may be entered, restraining de- 
fendants from using the word ^'Dake" in connection with 
bakery products, either alone or with prefixes or suffixes. 

See International Silver Co. v. Rogers Co. et al., 110 Fed., 
955. 

(Endorsed) Filed May 25, 1904, Marshall E. Sampsell, 
Clerk. 



68 NATIONAL BISCUIT COMPANY rs. DAKE CRACKER COMPANY 



Northern District of Illinois, 

Northern Division. f ' 

I, Marshall E. Sampsell, Clerk of the Circuit Court of 
the United States for said Northern District of Illinois, 
do hereby certify the above and foregoing to be a true and 
complete copy of the Opinion, filed in said Court on the 25th 
day of May, A. D. 1904, in the cause wherein National 
Biscuit Compam^ is the complainant and Dake Cracker Co. 
et al. are the defendants, as the same appears from the 
original records thereof now remaining in my custody and 
control. 

In Testimony whereof, I have hereunto set my hand and 
affixed the seal of said Court at my office in Chicago, in said 
District, this 26th day of May, A. D. 1904. 

Marshall E. Samp sell, 

Clerk, 




NATIONAL BISCUIT COMPANY vs. DAKE CRACKER COMPANY 69 



INJUNCTION. 

CiRcriT Court of the United States of America, i 

Northern District of Illinois > ss. 

Northern Division. ) 

THE UNITED STATES OF AMERICA, 

To Dake Cracker Company, a corporation, and J. A. Bernard 
Hossack, William P. Fennell and Abel L. Allen, doing 
business jointly with and as officers and managers of Dake 
Cracker Company, and to your Counselors, Attorneys, 
Solicitors, Trustees, Agents, Clerks, Employes, Servants 
and Workmen, and to each and every of you. Greeting: 

Whereas, It hath been represented to the Judges of our 
Circuit Court of the United States for the Northern Division 
of the Northern District of IlUnois in Chancery sitting, on 
the part of National Biscuit Company, complainant in its 
certain bill of complaint, exhibited in our said Circuit Court, 
on the Chancery side thereof, before the Judges of said Court, 
against you, the said Dake Cracker Company, a corporation, 
and J. A. Bernard Hossack, William P. Fennell and Abel L. 
Allen, doing business jointly with and as officers and man- 
agers of Dake Cracker Company, to be relieved touching the 
matters complained of. In which said bill it is stated, 
among other things, that you are combining and confederat- 
ing with others to injure the complainant touching the mat- 
ters set forth in said bill, and that your actings and doings 
in the premises are contrary to equity and good conscience. 
And it being ordered that a Writ of Preliminary Injunction 
issue out of said Court, upon said bill, enjoining and restrain- 
ing you, and each of you, as prayed for in said bill; We, 
therefore, in consideration thereof, and of the particular 
matters in said bill set forth, do strictly command you, the 



70 NATIONAL BISCUIT COMPANY vs. DAKE CRACKER COMPANY 

said Dake Cracker Company, a corporation, and J. A. 
Bernard Hossack, William P. Fennell and Abel L. Allen, 
doing business with and as officers and managers of Dake 
Cracker Company, your Counselors, Attorneys, Solicitors, 
Trustees, Agents, Clerks, Employes, Servants and Work- 
men, and each and every of you, that you no absolutely 
DESIST AND REFRAIN FROM in any manner whatsoever, manu- 
facturing, handling, using, selling or advertising the bakery 
products all packages containing thereon, or in connection 
therewith your orator's said trade-mark or name, or any 
imitation or simulation thereof; also, from using your 
orator's trade name or mark on any package of any descrip- 
tion, or any simulation or imitation thereof, upon any 
wrapper, box, carton, or barrel, or by any means whatsoever 
that msLj be adopted in the sale of bakery products of any 
description, that may be in any way calculated to deceive 
and otherwise enjoining and restraining in every way the 
said defendant from fraudulently using said trade-mark, 
or trade name, or any simulation or imitation thereof in the 
manufacture, use or sale of bakery products, or from violat- 
ing or infringing the equitable rights of your orator in the 
premises herein complained of and set forth, or from using 
the word ''Dake'" in connection with bakery products, 
either alone or with prefixes or suffixes, until this Honorable 
Court, in Chancery sitting, shall make other order to the 
contrary. Hereof fail not, under the penalty of what the 
law directs. 

To the Marshal of the Northern District of Illinois, to 
execute and return in due form of law. 

Witness The Hon. Melville W. Fuller, Chief Justice 
of the United States of America, at Chicago, in said Dis- 
trict, this 30th day of December, in the year of our Lord 



NATIONAL BISCUIT COMPANY vs. DAKE CRACKER COMPANY 71 



one thousand nine hundred and one and of our Independence 
the one hundred and twenty-sixth year. 

S. W. BURNHAM, 

Clerk. 




Northern District of Illinois, 
Northern Division. 



ss. 



I, S. W. Burnham, Clerk of the Circuit Court of the 
United States, for said Northern District of Illinois, do 
hereby certify the above and foregoing to be a true and com- 
plete copy of an Injunction Writ issued out of this Court on 
the 30th day of December, A. D. 1901, in the cause wherein 
the National Biscuit Company is the complainant and the 
Dake Cracker Company et al. are the defendants, as the same 
appears from the original issued out of and under the seal 
of this Court. 

In Testimony Whereof, I have hereunto set my hand 
and affixed the seal of said Court at my office in Chicago, in 
said District, this 30th day of December, A.. D. 1901. 

S. W. BURNHAM, 

Clerk. 




NATIONAL BISCUIT COMPANY vs. DAKE CRACKER COMPANY 



ORDER MAKING INJUNCTION PERPETUAL. 



Circuit Court of the United States, 

Northern District of Illinois, 

Northern Division. 



May 28, 1902. 

Present, Hon. Christian C. Kohlsaat, District Judge. 

National Biscuit Company ^ 26,043. 

vs. I In Equity. 

Dake Cracker Company and J. A. [Bill for Infringement 

Bernard Hossack. J of Trade Name, etc. 

This cause coming on to be heard this 28th day of May, 
1902, upon the pleadings as filed, Messrs. Offield, Towle & 
Linthicum, attorneys for and appearing in behalf of said 
complainant, the National Biscuit Company, and Mr. W. P. 
Fennell, attorney for and appearing in behalf of the defend- 
ant ; and it appearing to the Court that said defendants do 
not desire further to contest or defend this action, and admit 
the truth of the allegations of the bill of complaint; and 
that said defendants have tendered and paid the costs in 
this action as taxed by the clerk, and have also settled for 
and paid to complainant the damages caused to plaintiff 
by the commitment of the unlawful acts as set forth in the 
bill of complaint, and that no remaining question is pre- 
sented except and relating to the matter of the granting of 
the injunction therein. 

It is therefore ordered, adjudged and decreed that the pre- 
liminary injunction heretofore granted in this case is hereby 
made perpetual, and that this decree and order be, and is, 
final. 



NATIONAL BISCUIT COMPANY vs. DAKE CRACKER COMPANY 73 



Northern District of Illinois, 



ss 
Northern Division. 



I, Marshall E. Sampsell, Clerk of the Circuit Court of 
the United States for said Northern District of Illinois, do 
hereby certify the above and foregoing to be a true and com- 
plete copy of the order entered of record in said Court on 
the 28th day of May, A. D. 1902, in the cause wherein Na- 
tional Biscuit Company is the complainant and Dake 
Cracker Company et al. are the defendants, as the same 
appears from the original records thereof now remaining in 
my custody and control. 

In Testimony Whereof, I have hereunto set my hand and 
affixed the seal of said court at my office in Chicago, in said 
District, this 26th day of May, A. D. 1904. 

Marshall E. Sampsell, 
Clerk. 




(Eircutf Qlonxi of f fje HnifBb ;§fafBg 

Middle District of Pennsylvania 



NATIONAL BISCUIT COMPANY 

Complainant, 

vs. 

LAWRENCE WALTER, 

Defendant. 



> IN EQUITY 



ORDER, INJUNCTION AND DECREE 



CHARLES K. OFFIELD 
EARL D. BABST 
H. C. REYNOLDS 

For Complainant. 

S. J. STRAUSS 

For Defendant. 



76 



NATIONAL BISCUIT COMPANY vs. WALTER 







NATIONAL BISCUIT COMPANY vs. WALTER 77 



United States Circuit Court, 
Middle District of Pennsylvania 



,! 



National Biscuit Company, 
Complainant, 



I In 



Equity. 



^^' - (Motion for Injunction. 

Lawrence Walter, 

Defendant. J 

INJUNCTION ORDER. 

This cause coming on to be heard upon the 21st day of 
May, A. D. 1902, at 10 o'clock a. m., upon motion for injunc- 
tion as filed, and upon the pleadings and affidavits filed 
herein, Messrs. Charles K. Offield and H. C. Reynolds, 
solicitors and of counsel for the motion, and S. J. Strauss for 
the defendant, the court having duly considered the same. 

And it appearing to the court, from the bill of complaint, 
exhibits and affidavits filed herein, that the motion should 
be granted: 

It is, therefore, ordered, adjudged and decreed that a 
preliminary injunction issue under, and in accordance with 
the allegations of, and the prayer of the bill of complaint 
filed herein, to continue in effect until the next term of this 
court. 

R. A. Archbald, 

District Judge. 



78 NATIONAL BISCUIT COMPANY vs. WALTER 

INJUNCTION. 

ClKCUIT CorRT OF THE UNITED StATES OF AMERICA, I 

Middle District of Pennsylvania. ) 

THE UNITED STATES OF AMERICA, 

To Laurence Walter, and to your Counselors, Attorneys, 
Solicitors, Trustees, Agents, Clerks, Employes, Servants and 
Workmen, and to each and every of you. Greeting: 

Whereas, It hath been represented to the Judges of our 
Circuit Court of the United States for the Middle District 
of Pennsylvania in Chancery sitting, on the part of National 
Biscuit Company, complainant in its certain bill of com- 
plaint, exhibited in our said Circuit Court, on the Chancery 
side thereof , before the judges of said court, against you, the 
said Lawrence Walter to be relieved touching the matters 
complained of. In which said bill it is stated, among other 
things, that 3^ou are combining and confederating with others 
to injure the complainant touching the matters set forth in 
said bill, and that your actings and doings in the premises 
are contrary to equity and good conscience. And it being 
ordered that a Writ of Preliminary Injunction issue out of 
said court, upon said bill, enjoining and restraining you, and 
each of you, as provided for in said bill; W^e, therefore, in 
consideration thereof, and of the particular matters in said 
bill set forth, do strictly command you, the said Lawrence 
Walter, your Counselors, Attorneys, Solicitors, Trustees, 
Agents, Clerks, Employes, Servants, and Workmen and each 
and every of you, that you do absolutely desist and re- 
frain FROM the manufacture, use or sale of cartons or pack- 
ages, or bakery products, contained in cartons, having there- 
on a red label or wrapper simulating the red label wrapper of 
complainant; and do absolutely desist and restrain from the 



NATIONAL BISCUIT COMPANY vs. WALTER 79 

manufacture, use, or sale of cartons or packages containing 
bakery products, having thereon a red label or wrapper, with 
accompanying markings complained of; or from, in any man- 
ner whatever, advertising or selling bakery products or pack- 
ages having thereon, substantially, complainant's red label 
or wrapper, or any marking or imitation thereof, or simu- 
lation thereof, that may be in any way calculated to, in any 
way, mislead or deceive; and otherwise do absolutely restrain 
from forthwith, in any other way, fraudulently using said 
complainant's red label wrapper upon cartons or packages, 
or in connection with the manufacture and sale of bakery 
products; or otherwise violating or infringing the equitable 
rights of complainant, as set forth and specified in complain- 
ant's bill of complaint, until this Honorable Court, in Chan- 
cery sitting, shall make other order to the contrary. Hereof 
fail not, under the penalty of what the law directs. 

To the Marshal of the Middle District of Pennsylvania to 
execute, and return in due form of law. 

Witness, the Hon. Melville W. Fuller, Chief Justice of 
the United States of America, at Scranton, in said District, 
this 21st day of May in the year of our Lord one thousand 
nine hundred and two, and of our Independence the one 
hundred and twenty-sixth year. 

A. J. COLBURN, Jr., 

Deputy Clerk. 




80 NATIONAL BISCUIT COMPANY vs. WALTER 

FINAL DECREE. 

In the Circuit Court of the United States. 
For the Middle District of Pennsylvania. 



National Biscuit Company, 
Complainant, 
versus 



No. 7, October 

Term, 1902. 

Bill for an In- 



Lawrence Walter, fringement, etc. 

Defendant. J Unfair Competition. 

This cause coming on to be heard upon the 23rcl day of 
April, A. D. 1904, at ten o'clock a. m., upon the final plead- 
ings, and proofs, and the Court being fully advised and hav- 
ing duly considered the same. 

It is therefore ordered, adjudged and decreed: 

First: That the said complainant has good right and 
title in and to the red label or wrapper used by them in the 
manufacture and sale of cartons or packages of graham 
crackers, like or substantially like ''Complainant's Exhibit, 
Complainant's Label and Wrapper Package," identified by 
complainant's bill of complaint and presented as an exhibit 
in this case. 

Second: That the defendant has infringed and violated 
the right and title of said complainant, as above identified, 
by selling and purchasing and selling cartons or packages of 
graham crackers, having thereon a red label or wrapper like 
or substantially like complainant's red label or wrapper, 
and having thereon lettering and marking like or substan- 
tially like complainant's lettering and marking, upon com- 
plainant's exhibit, and as particularl}^ shown by "Com- 
plainant's Exhibit, Defendant's Cartons or Packages," 
present as an exhibit in this case. 

Third: That this cause be referred to Henrj^ A. Knapp, 



NATIONAL BISCUIT COMPANY vs. WALTER 81 

Esq., one of the Masters in Chancery in this Court, to take 
testimony and ascertain and report to this Court the profits 
accruing to the defendant, by reason of the commitment of 
the unlawful acts here found, and the damages accruing to 
the complainant, by reason of such acts, wdth full power to 
summon and command the attendance of the defendant 
for examination with all books and papers relevant to such 
examination, and. to summon and command also the attend- 
ance of all witnesses having knowledge of facts relevant to 
the determination of questions involved in this issue of 
reference; and that the testimony heretofore taken in this 
cause shall be before said Master so far as relevant to this 
reference. Said Master to report to this Court his findings 
and conclusions thereon. 

Fourth: That the preliminary injunction heretofore 
granted, and now in force, is hereby made perpetual, and 
the complainant have and recover from the defendant the 
costs in this case to be taxed, and have execution therefor. 

R. A. Archbald, 

District Judge. 



United States of America, ) , 

Middle District of Pennsylvania, j 



I, Edward R. W. Searle, Clerk of the Circuit Court of 
the United States of America, for the Middle District of 
Pennsylvania in the Third Circuit, do hereby certify that 



82 



NATIONAL BISCUIT COMPANY vs. WALTER 



the writings annexed to this certificate are true copies of 
their respective originals on file and now remaining among 
the records of said court in my office. 

In testimony w^hereof, I have hereunto subscribed my 
name and affixed the seal of the said Court, at Scranton, 
this 31st day of May in the year of our Lord one thousand 
nine hundred and four and of the Independence of the 
United States the 128. 

E. W. R. Searle, 

Clerk of C. C. 




Western District of New York 



NATIONAL BISCUIT COMPANY 

Complainant, 
^^ > IN EQUITY 

IRA SWICK, 

Defendant. 



STIPULATION FOR INJUNCTION, 
OPINION AND DECREE 



MOOT,SPRAGUE, BROWNELL & MARCY 
OFFIELD, TOWLE & LINTHICUM 
EARL D. BABST 

For Complainant. 

BANNING & BANNING 
BENJAMIN C. STARR 

For Defendant. 



84 



NATIONAL BISCUIT COMPANY vs. SWICK 





NATIONAL BISCUIT COMPANY vs. SWICK 



85 





"^CKER 



86 



NATIONAL BISCUIT COMPANY vs. SWICK 





NATIONAL BISCUIT COMPANY vs. SWICK 87 



Stipulation for Injunction. 



Circuit Court of the United States, Western District 
OF New York. 



National Biscuit Company, 

Complainant. 
V. >• In Equity. 

Ira Swick, 

Defendant. 



It is hereby stipulated and agreed by and between the 
above parties, by their counsel, respectively, that an injunc- 
tion may be entered in the above entitled cause against the 
defendant enjoining him from using the ^^Long Branch 
Biscuit Ribbon-Tying" design, the trade-mark or name 
^'Zephyrette," and the trade-mark or name ^'Excelsior" 
or "Excelsior Butter Cracker" as prayed for in the bill of 
complaint in the above entitled cause, but without costs, 
profits or damages to which the complainant might be en- 
titled for the past, the same having been mutually agreed 
upon and arranged. 

It is further stipulated and agreed that the Ohio Baking 
Company, manufacturer of the cartons and packages sold 
by the defendant containing the above mentioned trade- 
marks, names or designs, shall cease and discontinue the 
use of each of the above trade-marks, names or designs on 
or before the First day of January, 1902, and in considera- 
tion thereof the complainant hereby releases and quit 
claims under said agreement and arrangement the said 
Ohio Baking Company from any and all claim for damages 



gg NATIONAL BISCUIT COMPANY vs. SWICK 

or profits which it might have against said Company on 
account of its use prior to January 1, 1902, of each of said 
trade-marks, names or designs whether used on packages, 
sold to the defendant herein or others. 

OfFIELD, ToWLE & LiNTHICUM, 

Solicitors for Complainant. 
Banning & Banning, 

Solicitors for Defendant. 



NATIONAL BISCUIT COMPANY vs. SWICK 89 



(United States Circuit Court, Western Division New York. March 17, 

1903.) 

No. 134. 

1 . Trade-Marks — Infringement. 

A technical trade-mark, although not a facsimile of another, may 
be so used by a rival manufacturer as to imitate another's trade- 
mark, and, when such use actually deceives the public, it consti- 
tutes an infringement, against which a court of equity will grant 
relief. 

2. Same. 

Complainant used and registered a trade-maik consisting of a 
square label or seal of a vivid red color, with the corners clipped, 
on which was an arbitrary combination of straight and curved lines 
in white, in which were printed the letters and word "In-er-seal." 
These labels were placed on the ends of complainant's cartons con- 
taining bakery products. Another manufacturer of the same class 
of goods registered as a trade-mark, and used in the same manner 
on its cartons, a label the same in size, shape, and color, having 
thereon a combination of white lines consisting of circles and straight 
lines with the words "Factory" and "Seal" printed thereon. The 
figure or sjaiibol was not the same, but the general effect of the 
combination in a label used in the same place on a carton of the 
same size, shape, and color, together with a similar figure and the 
word "Seal," was to simulate the trade-mark of complainant, and 
to deceive purchasers. Held, that such use of defendant's trade- 
mark was an infringement of that of complainant, which entitled it 
to an injunction. 

In Equity. Suit for infringement of trade-mark. On 
final hearing. 

Moot, Sprague, Brownell & Marcy, Offield, Towle & Lin- 
thicum, and Earl D. Babst (Charles K. Offield, of counsel), 
for complainant. 

Banning & Banning and Benjamin C. Starr, for defendant. 

HAZEL, District Judge. The bill as originally filed, 
charges the defendant with unlawful infringement of a trade- 
mark and five trade-names used by complainant upon its 
various bakery products. A stipulation was filed before 
answer, admitting infringement by defendant as to five of 
the trade-names. Accordingly a decree was entered by 



90 



NATIONAL BISCUIT COMPANY vs. SWICK 



consent of all parties restraining and enjoining the future 
use of such trade-names by the defendant. The alleged in- 
fringement by the defendant of complainant's ^'In-er-seal" 
registered trade-mark No. 35,108, dated September 18, 1900 
is now the sole and specific subject for judicial determination. 



Complainant's Trade-mark. 




NATIONAL BISCUIT COMPANY vs. SWICK 



9J 



Defendant's Trade-mark. 




The defendant's infringement consists in the use of the 
registered trade-mark No. 35,597, dated December 18, 1900, 
issued to the Ohio Baking Company. 

The proofs show that complainant manufactures various 
kinds of bakery products, which it places upon the market 
in special and distinct sizes of cartons or packages. Such 
cartons and packages widely vary in form and coloring, and 
are lettered on their sides in different size type. Upon the 
ends of each package or carton is applied the trade-mark 
printed upon a square label or seal, clipped at the corners, 
in clear white lines upon a vivid red background. The proofs 
further show that the trade-mark seal has since its adoption 
regularly been applied to the ends of the cartons in the man- 
ner described, except in a few instances. Complainant con- 



92 NATIONAL BISCUIT COMPANY i-s. SWICK 

tends that its product has become well known to the general 
public because of the peculiarly quaint configuration of its 
trade-mark, which is uniquely displayed. The bill charges 
the adoption of the trade-mark on or about the month of 
March, 1899, and its subsequent registration in the office of 
the Commissioner of Patents May 12, 1900. It is specific- 
ally described as — 

^' An arbitrarily-selected design or symbol representing an 
oval-shaped figure separated centrally and horizontally in 
the direction of its greatest length by a bar, from which there 
rises centrally and at right angles thereto a perpendicular 
bar, which near its upper end is intersected by double hori- 
zontal cross-bars, thus forming what might be designated as 
a 'double-T-shaped' figure or cross-tree, while with said 
oval-shaped section and above the horizontal dividing-bar 
and to the left of the perpendicular intersecting bar appear 
the letters 'I N,' and on the opposite side of said perpenclicu- 
lar intersecting bar appear the letters 'E R,' the lower 
section of said oval-shaped figure having therein the word 
'Seal."^ 

The specification describes and the drawings show the de- 
sign as applied upon a rectangular background, the corners 
thereof being clipped or irregular. The specification states a 
preference for the employment of a bright red or orange-col- 
ored background in connection with the trade-mark design 
with the figures and lines printed in white. The specifica- 
tion further says that the purpose and object of the peculiar- 
ity of the design is to produce a conspicuous effect, securing 
the greatest possible prominence. The design is usually 
printed on the labels attached to the ends of the cartons or 
packages containing complainant's product. This arbitrary 
and fanciful designation was first appropriated by complain- 
ant as a trade-mark for its bakery product, and it is, there- 
fore, entitled to protection from infringement. It quite 
clearly appears from the evidence that complainant's trade- 
mark has been extensively advertised^^^at large expense 



NATIONAL BISCUIT COMPANY vs. SWICK 93 

throughout the United States and in the locality where the 
defendant carries on his business of selling bakery products, 
and where the alleged infringing trade-mark is asserted to 
have been fraudulently used. The defendant is a dismissed 
employe of the complainant. He was well acquainted with 
complainant's customers in the territory where the alleged 
infringements were committed. Soon after his dismissal 
from complainant's employ, he commenced to divert the 
trade of complainant by introducing the bakery product 
of a competitive manufacturer, and finally simulated com- 
plainant's trade-mark, as a result of which his sales in- 
creased. Defendant's bakery product is manufactured by 
the Ohio Baking Company, and is put upon the market 
wrapped up in carton form, sealed at the ends, and having 
a vivid red rectangular label at each end, clipped at the 
corners. Upon the seals or square labels is imprinted in 
distinctive white lines the registered trade-mark of the 
Ohio Baking Company, above set forth. The labels upon 
which is printed the infringing device as to color, size, and 
irregular shape are in similitude of complainant's labels or 
seals. The configuration of the infringing trade-mark 
consisting of curved and straight lines, flaring at the ends 
in resemblance of complainant's lines, is more particularly 
described in the specification as consisting of three parallel 
vertical bars and central cross-bar and two circles arranged 
in the manner shown by the figure itself. Defendant claims 
that the Ohio Company trade-mark really consists of a 
fanciful monogram of the word ^^Ohio," and that he has 
the right to use it in any size, shape, and color. Promi- 
nently appearing in defendant's label are the words ^'Fac- 
tory" at the upper end and ^'Seal" at the lower end. This 
also would appear to be in simulation of the word ^'In-er- 
seal" printed on complainant's device. The packages or 



94 NATIONAL BISCUIT COMPANY vs. SWICK 

cartons of both complainant and defendant have printed 
matter upon their sides, indicating the character of their 
contents and the name of the manufactm'er. The form of 
the package and style of type and color of wrapper are 
concededly the property of the public, as, indeed, are the 
labels clipped at the corners having a bright red back- 
ground. No point is made to any similitude of cartons, 
style, or color of print, nor even of the separate features of 
complainant's trade-mark. The defendant contended gen- 
erally on argument that the specifically defined trade-mark 
of complainant as to its general features and characteristics 
must be interpreted as limiting its scope to that which is 
actually described. If this contention means that com- 
plainant is restricted to the use of the trade-mark, and 
has obtained no exclusive right in the collocation of its 
parts and the distinguishing features by which the trade- 
mark has become known to the public, such contention is 
without merit. The gist of the complaint is a violation of 
a trade-mark, which is composed of a peculiar configuration 
of lines and a combination of other features. In other 
words, the distinguishing characteristics of the trade-mark 
consist in the circles and straight lines in relation to each 
other, and printed upon the label in white and upon a vivid 
red background. In the case of Lalance & Grosjean Mfg. 
Co. V. National Enamehng & Stamping Co. (C. C), 109 
Fed. 317 — a case of unfair competition — it w^as held that 
no one can have a trade-mark monopoly of any color of 
paper, or any shape of label, or any color of ink, or any one 
or other detail, yet the general collocation of such details 
will be protected. The sole question, therefore, is whether 
the defendant's design for a trade-mark imprinted on a 
vivid red background in simulation of complainant's design 
is fairly within complainant's asserted exclusive scope. 



NATIONAL BISCUIT COMPANY vs. SWICK 95 

That complainant's trade-mark and manner of displaying 
the same attracts the public attention cannot be success- 
fully disputed. Undoubtedly, complainant's manufactured 
product has become extensively known to the public solely 
by its peculiar trade-mark. I have no doubt that an in- 
tending purchaser of complainant's product using ordinary 
care is attracted to the arbitrary trade-mark design, and 
not to any printed words on the sides of the packages, or 
even to the nomenclature of the manufacturer of the 
product. When both designs were exhibited on the hear- 
ing, I became well satisfied that defendant's device and 
manner of applying it in combination with the other 
features are in imitation of complainant's. Such resem- 
blance tends to deceive an ordinary purchaser giving the 
usual attention, and causes him to purchase the one believ- 
ing it to be the other. Although defendant's device and 
configuration is not in strict resemblance to complainant's 
yet force is given to the impression which I obtained on 
the hearing because of the adoption by defendant of a 
bright red background and a label clipped at the corners 
of corresponding size to that of complainant. The record 
discloses that the trade-mark seal of the defendant and the 
manner of displaying it upon the ends of cartons and pack- 
ages is likely to deceive the ordinary purchaser into the 
belief that he was purchasing the product of complainant. 
By the testimony of defendant's witness Gaiser, a grocer, 
it appears that an intending purchaser must make a close 
examination of both packages in order to distinguish 
defendant's packages and cartons from complainant's. 
The witness was unable at the hearing, when both packages 
were exhibited to him, to discover much difference, and 
was compelled to look for the name of the manufacturer 
to distinguish the product of complainant from that of 



96 XATIOXAL BISCriT COMPAXY vs. SWICK 

defendant. Other e^^-idence was given by complainant upon 
the hearing showing the similitude of the respective trade- 
marks to be such as to deceive the public into buying the 
bakery product of defendant under the impression that 
they are buying those of complainant. Irrespective, how- 
ever, of such proof, the trade-mark imprinted upon a bright 
red-colored label, clipped at the corners, and of correspond- 
ing size to complainant's is alone calculated to deceive, and 
must be regarded as an infringement of complainant's 
rights secm'ed by its registered trade-mark. Specific proof 
of purchases by individuals actually deceived imder such 
circiunstances appears not to be necessary. Cleveland Stone 
Co. r. Wallace (C. C), 52 Fed. 431: Xational Biscuit Co. v. 
Baker (C. C.\. 95 Fed. 135: Von Mumm r. Frash (C. C), 
56 Fed. S30. In the controversy it is immaterial that the 
size of cartons, color of wrapper, size and kind of label, 
and separate featm-es of complainant's trade-mark are old, 
and may, therefore, be used by any one. The complain- 
ant's trade-mark, its features of coloring, rectangular 
labels, white lines on a ^ivid background, manner of dis- 
playing the arbitrary designation at the ends of the pack- 
ages, aU in combination, are peculiarly distinguishing marks 
for its goods. I am well satisfied that a technical trade- 
mark, although not a fac-simile of another, may. never- 
theless, be so used by a rival manufacturer as to imitate 
another's trade-mark, and when such use actually deceives 
the public a court of equity will aiTord relief. Scheuer r. 
Muller, 20 C. C. A. 161. 74 Fed. 225: Draper v. Skerrett 
(C. C), 94 Fed. 912. I have examined the case of Richter 
V. Anchor Remedy Co. (C. C), 52 Fed. 455, and other cases 
cited by coimsel. but such cases are either not in point or 
do not disturb the conclusion reached. By the manner 
of defendant's use of the Ohio Baking Company's trade- 



NATIONAL BISCUIT COMPANY vs. SWICK 97 

mark he obtains a benefit to which he is not entitled. He 
appropriates the good will of a rival business by purloining 
his rival's method of dressing his vendible goods. City of 
Carlsbad v. Schultz (C. C), 78 Fed. 471; Sprague Elec. Ry. 
& Motor Co. v. Nassau Elec. Ry. Co., 37 C. C. A. 286, 95 
Fed. 821. As Judge Wanty said when the case against 
the Ohio Baking Company was before him on application 
for preliminary injunction, "Why does the defendant use 
the exact shade of red used by complainant?" Further 
inquiry is pertinent. Why white letters of substantially 
the same type? Why labels of uniform size, and with 
clipped corners? Other questions of like kind may be pro- 
pounded. The record discloses no satisfactory answer, and 
therefore it is manifest that the defendant deliberately 
and fraudulently imitates the trade-mark of complainant, 
and in that manner designs to palm off his goods for those 
of complainant. 

The complainant may have a decree, with costs, enjoin- 
ing the defendant from imitating or simulating complain- 
ant's "In-er-seal" trade-mark, as set out in this opinion. 
So ordered. 

121 Fed. Rep. 1007. 



NATIONAL BISCUIT COMPANY vs. SWICK 



FINAL DECREE. 



United States Circuit Court, 
Western District of New York, 



National Biscuit Company/ 
Complainant, 
vs. 
Ira Swick, 

Defendant. 



Bill for Infringement of 
}■ Trade-mark. 
Decree. 



This cause coming on to be heard upon pleadings and full 
proof, and having been fully argued by counsel respectively, 
for both parties litigant: Mr. Charles K. Offield, Mr. Adel- 
bert Moot, and Mr. Earl D. Babst, for complainant; Messrs. 
Banning & Banning, and Mr. Benjamin C. Starr, for de- 
fendant; and the court being full}^ advised, and having 
duly considered the same, orders, adjudges and decrees: 

First: That the said complainant, the National Biscuit 
Company's In-er-seal Trade-mark is a good and valid 
Trade-mark, and the complainant has full and unques- 
tioned title thereto and therein, as alleged in the bill of 
complaint filed herein. 

Second: That the said defendant, Ira Swick, has in- 
fringed upon and violated said complainant's In-er-seal 
trade-mark, as alleged in said bill of complaint. 

Third: That the said defendant, his agents, servants, 
attorneys, and employes be, and hereby are enjoined from 
applying or using complainant's In-er-seal trade-mark in 
any manner whatsoever, upon, or- in connection with, 
bakery products; or in any manner whatsoever, handling, 
selling, or advertising bakery products, or packages, or 
cartons containing bakery products having thereon com- 
plainant's said trade-mark, or any imitation or simulation 
thereof. 



NATIONAL BISCUIT COMPANY vs. SWICK 99 

Fourth: That the said complainant has the right to re- 
cover any and all damages accruing to, or arising out of said 
unlawful violation and infringement of said trade-mark by 
said defendant, together with the cost herein to be taxed; 
and that this cause be referred to George P. Keating, he be- 
ing a suitable person as Master of this Court, to take, state 
and report an account of such damages under and in accord- 
ance with this decree, and that upon said accounting the 
testimony heretofore taken by either party in this cause may 
be read by either party, and considered by the Master. 

John R. Hazel, 

U. S. J. 

Endorsed: U. S. Circuit Court, Western District of New 
York. In Equit5^ National Biscuit Company vs. Ira 
Swick. Decree. U. S. Circuit Court, Western Dist. of N. 
Y. Filed Mar. 28, 1903. Harris S. WiUiams, Clerk. 



United States of America, 
Western District of New York. 

I, Harris S. Williams, Clerk of the Circuit Court of the 
United States, for the Western District of New York, do 
hereby certify that I have compared the annexed copy of 
Decree with the original entered and on file in this office, 



100 



NATIONAL BISCUIT COMPAXY 



SWICK 



and that the same is a correct transcript therefrom, and 
of the whole of said originaL 

And I further certify that I am the officer in whose 
custody it is required by law to be. 

Ix TESTiMOX'Y AVHEREOF. I liavc causcd the seal of the 
said Court to be affixed at the City of Buffalo, in said 
District, this 6th day of April, A. D. 1903. 

Harris S. Williams, 

Clerk. 




(Eircmt QTourf of f I;e Hmfeti ^Mm 



Southern District of New York 



NATIONAL BISCUIT COMPANY 
a corporation, 

Complainant, 

HENRY PUNCHARD, Sr. and HENRY PUNCH- 

ARD, Jr., co-partr.ers, doing business as 

HENRY PUNCHARD & SON, 

Defendants. 



y IN EQUITY 



DECREE AND INJUxNCTlON 



EDMUND WETMORE 
CHARLES K. OFFIELD 
EARL D. BABST 

For Complainant. 

JOHN A. MAPES 

For Defendants. 



102 NATIONAL BISCUIT COMPANY vs. PUNCHARD 





NATIONAL BISCUIT COMPANY vs. PUNCHARD 





NATIONAL BISCUIT COMPANY vs. PUNCHARD 103 

FINAL DECREE. 

United States Circuit Court, 
Southern District of New York. 

National Biscuit Company, a cor- 
poration, 

Complainant, 
vs. 
Henry Punchard, Sr., and Henry )- 
Punchard, Jr., co-partners, do- 
ing business as Henry Punchard 
&Son. 

Defendants. ^ 

This cause coming on to be heard under the pleadings as 
filed, and Mr. Edmund AVetmore, Mr. Earl D. Babst and 
Mr. Charles K. Offield, appearing in behalf of the complain- 
ant, and Mr. John A. Mapes in behalf of the defendants, and 
it appearing to the Court that the said defendants do not de- 
sire to further contest this action, but have made a certain 
settlement of the same and assented as follows : 

(1) That the said complainant is the rightful and exclu- 
sive owner of the trade-name ^%^needa" or "Uneeda Bis- 
cuit" as alleged in said bill of complaint, and is the rightful 
and exclusive owner of the trade-mark ''In-er-seal", con- 
sisting of a vivid red background, square in shape with uni- 
form clipped corners having white line markings thereon and 
applied to each end of the bakery cartons or packages with 
a marginal exposure surrounding the same, and is the right- 
ful and exclusive owner of the wrapper application, word 
collocation and decorative appearance of the wrapper sur- 
rounding and enclosing said carton or package, as appears 
by complainant's exhibits filed herewith; 

(2) That the said defendants, Henry Punchard, Sr., and 



104 NATIONAL BISCUIT COMPANY vs. PUNCHARD 

Henry Punchard, Jr.^ have infringed and violated these ex- 
clusive rights, trade-name, trade-mark and wrapper embel- 
lishment by the use upon such cartons of the words " Ulika 
Biscuit," as appears upon the sides of defendants' cartons, 
and of the bright red seal upon the ends thereof with white 
line accompanying markings thereon and by the wrapper 
simulation of complainants, as appears by ^'Complainant's 
Exhibit Defendants' Infringing Carton" filed herein. 

(3) That the Manhattan Biscuit Company, a corpora- 
tion organized under the laws of the State of New Jersey, 
etc., puts up, makes and sells the infringing cartons with the 
wrapper accompaniment as disclosed by the defendants' 
carton, and instigated and authorized the commitment of 
the infringing acts above found. 

(4) That the defendants having settled for the damages 
and profits suffered by the complainant and accruing to the 
defendants by reason of these infringing acts, no reference to 
a master for an accounting is made, but it is — 

Ordered, adjudged and decreed that a perpetual in- 
junction issue as prayed for in the bill of complaint in the 
manner and to the extent demanded in the fourth subdivi- 
sion of the prayer for relief contained in the complainant's 
bill of complaint and that the defendants pay the taxable 
court costs in this action and in default thereof that execu- 
tion issue therefor. 

Dated New York, November 3, 1904. 

E. Henry Lacombe, 

U.S. Circuit Judge. 

I hereby consent to the entry of the above decree. 

John A. Mapes, 
Defendants' Solicitor. 



NATIONAL BISCUIT COMPANY vs. PUNCHARD 105 

We hereby consent to the entry of the above decree. 
Earl D. Babst, 

OfFIELD, ToWLE & LiNTHICUM, 

Complainant's Solicitors. 
Edmund Wetmore, 
Charles K. Offield, 
Earl D. Babst, 

Of Counsel. 

(Endorsed) United States Circuit Court, Southern Dis- 
trict of New York. National Biscuit Co., Complainant, vs. 
Henry Punchard, Sr., et al.. Defendants. Final decree. 
Earl D. Babst & Offield, Towle & Linthicum, Solrs. for 
Complt. 34 Pine St., New York. U. S. Circuit Court, 
Southern District of New York, Filed Nov. 3, 1904, John A. 
Shields, Clerk. 




A copy. 

John A. Shields, 

Clerk. 



106 NATIONAL BISCUIT COMPANY vs. PUNCHARD 

INJUNCTION. 

THE PRESIDENT OF THE UNITED STATES OF 
AMERICA, 

To Henry Punchard, Sr., and Henry Punchard, Jr., their 
clerks, attorneys, servants, agents and workmen, and each a7id 
every of them, Greeting: 

Whereas, it has been represented to us in our Circuit 
Court of the United States for the Second Circuit and South- 
ern District of New York, that the complainant. National 
Biscuit Company, is the rightful and exclusive owner of the 
trade-mark ^'Uneeda" or ^'Uneeda Biscuit", as alleged in 
the bill of complaint herein, and is the rightful and exclusive 
owner of the trade-mark ^'In-er-seal", consisting of a vivid 
red background square in shape with uniform clipped cor- 
ners having white line markings thereon and applied to each 
end of the bakery cartons or packages, with a marginal ex- 
posure surrounding the same, and is the rightful and ex- 
clusive owner of the wrapper application, word collocation 
and decorative appearance of the wrapper surrounding and 
enclosing said carton or package, as appears by complainant's 
exhibits filed with said bill of complaint, and that the said 
defendants, Henry Punchard, Sr., and Henry Punchard, Jr., 
have infringed and violated these exclusive rights, trade- 
name, trade-mark and wrapper embellishment by the use 
upon such cartons of the words ^'Ulika Biscuit", as appears 
upon the sides of defendants' cartons,, and of the bright red 
seal upon the ends thereof with white line accompanying 
markings thereon, and by the wrapper simulation of com- 
plainant ; 

Now, THEREFORE, wc strictly command and enjoin you, 
the said Henry Punchard, Sr., and Henry Punchard, Jr., 



NATIONAL BISCUIT COMPANY vs. PUNCHARD 107 

and each of you, your servants, agents and employes, and 
all claiming or holding through or under you, under the pen- 
alties that may fall upon you in case of disobedience that you 
forthwith permanently and forever desist from in any man- 
ner whatsoever handling, advertising or selling the packages 
heretofore sold by defendants, complained of in the bill of 
complaint and hereinabove described, or making use of the 
word " Ulika" or " Ulika Bis-kit", or any word substantially 
like it or them, as the name or designation, or as a part of 
the name or designation connected with any biscuit upon 
any package used in the sale of biscuits, and from in any 
manner whatsoever making use of the word or words '^ Ulika" 
or " Ulika Bis-kit", or any other word substantially like it as 
the name or designation, or part of the name or designation 
upon any wrapper on any package of biscuits or crackers 
whatsoever; or from the use of said word or name upon any 
package or packages like those hereinabove described as the 
packages or cartons of said defendants, and in every way 
from making use in connection with the sale or advertisemient 
of biscuit the words ''Ulika" or ''Ulika Bis-kit" upon any 
packages so nearly like your orator's package hereinbefore 
described as to be calculated to mislead, or from in any way 
using upon the ends of such packages or cartons a label or 
seal of red background with white line markings thereon, as 
shown upon the ends of defendants' packages herein com- 
plained of, or from advertising by picture representations 
your orator's said trade-names or trade-mark and wrapper 
ornamentation, as appears in "Complainant's Exhibit De- 
fendants' Advertisement No. 1", and "Complainant's Ex- 
hibit Defendants' Poster Infringement No. 2", and from 
violating and infringing the rights of your orator in the prem- 
ises as hereinbefore set forth. 



108 



NATIONAL BISCUIT COMPANY vs. PUNCHARD 



Witness the Hon. Melville W. Fuller, Chief Justice of 
the United States at the City of New York, Borough of Man- 
hattan, on the oth day of November, 1904. 

John A. Shields, 

Clerk. 




A copy. 

John A. Shields, 

Clerk. 



Olircmf (Kourf of f F;b HntfBb ^laU^ 



District of Maryland 



NATIONAL BISCUIT COMPANY 

Complainant, 



HARGRAVE BISCUIT COMPANY, JOSEPH W. 
HARGRAVE, WILLIAM B. HARGRAVE, 
EPPS HARGRAVE, STEVEN J. VAN LILL 
and JAMES W. CHAPMAN, Jr., 

Defendants. 



IN EQUITY 



FINAL DECREE AND INJUNCTION 



OFFIELD, TOWLE & LINTHICUM 

Solicitors for Complainant. 

W. IRVINE CROSS 
EARL D. BABST 

Of Counsel for Complainant. 

GEORGE D. PENNIMAN 
JAMES W. CHAPMAN, Jr. 

Solicitors for Defendants. 



NATIONAL BISCUIT COMPANY vs. HARGRAVE BISCUIT COMPANY 1 1 1 




^-- *.f 



'^ w-^.^' 



HARGRAVe 
BISCIIT 



m 



U'! 



m 






VWV 



♦ ^#1 ?JWv^< 



1 12 NATIONAL BISCUIT COMPANY vs. HARGRAYE BISCUIT COMPANY 





NATIONAL BISCUIT COMPANY vs. HARGRAVE BISCUIT COMPANY 1 13 

FINAL DECREE. 

United States Circuit Court, 

District of Maryland. 

National Biscuit Company, 

Complainant, 
vs. 
Hargrave Biscuit Company, Joseph 
W. Hargrave, William B. Har- y 
grave, Epps Hargrave, Steven J. 
Van Lill and James W. Chapman, 
Jr. 

Defendants. 



Bill for infringement 
of trade-mark, trade- 
name and unfair 
competition. 



This cause coming on to be heard upon the pleadings as 
filed, Mr. W. Irvine Cross, Earl D. Babst and Charles K. 
Offield appearing in behalf of the complainant, and Mr. 
George D. Penniman and James W. Chapman, Jr., in behalf 
of defendants. 

And it appearing to the Court that said defendants 
do not desire further to contest or defend this action, and 
that said defendants have tendered and paid the costs to 
date in this action as taxed by the Clerk, and have also made 
settlement and paid damages and profits due the complain- 
ant by reason of the infringing acts set forth in the Bill of 
Complaint, and that no remaining question is open and 
present except the matter relating to the granting of an in- 
junction. 

It is therefore, this 19th day of October, 1905, ordered, 
adjudged and decreed that an injunction issue under and in 
accordance with the allegations of the Bill of Complaint 
and as identified by the prayer thereof, and that this decree 
and order be and is final. 

Thos. J. Morris, 

Judge. 



114 NATIOXAL BISCUIT COMPANY rs. HARGRAVE BISCUIT COMPANY 



United States of America. 
District of Maryland . 



TO-WIT : 



I. James AV. Chew. Clerk of the United States Ch'cuit 
Court for the District of Maryland, do hereby certify that 
the foregoing is a true copy of the Original Decree entered 
and filed in the therein entitled case in said Circuit Court, 
on the 19th day of October. 1905. 

Ix TESTIMONY WHEREOF. I hereunto set my hand and 
affix the seal of the said Circuit Court this 31st day of 
October, 1905. 

Jas. W. Chew, 
Clerk of said Circuit Court. 




NATIONAL BISCUIT COMPANY vs. HARGRAVE BISCUIT COMPANY 115 

INJUNCTION. 

Circuit Court of the United States of America, | 
District of Maryland. f 

THE UNITED STATES OF AMERICA, 

To Hargrave Biscuit Company, Joseph W. Hargrave, 
William B. Hargrave, Epps Hargrave, Steven J. Van Lill 
and James W. Chapman, Jr., and to your counselors, at- 
torneys, solicitors, trustees, agents, clerks, employees, servants 
and workmen, and to each and every one of you. Greeting: 

Whereas, it has been represented to the Judges of our 
Circuit Court of the United States for the District of Mary- 
land in Chancery sitting, on the part of the National Biscuit 
Company, complainant, in a certain Bill of Complaint, ex- 
hibited in our said Circuit Court, on the Chancery side 
thereof, before the Judges of said Court, against you, the 
said Hargrave Biscuit Company, Joseph W. Hargrave, 
William B. Hargrave, Epps Hargrave, Steven J. Van Lill 
and James W. Chapman, Jr., to be relieved touching the 
matters complained of. In which said bill it is stated, 
among other things, that you are combining and confed- 
erating with others to injure the complainant touching the 
matters set forth in said bill, and that your actings and 
doings in the premises are contrary to equity and good 
conscience. 

And it being ordered that a writ of perpetual injunction 
issue out of said Court, upon said bill, enjoining and re- 
straining you, and each of you, as prayed for in said bill; 
We, therefore, in consideration thereof, and of the particular 
matters in said bill set forth, do strictly command you, the 
said Hargrave Biscuit Company, Joseph W. Hargrave, 
William B. Hargrave, Epps Hargrave, Steven J. Van Lill 



116 NATIONAL BISCUIT COMPANY iv*. HARGRAVE BISCUIT COMPANY 

and James AV. Chapman, Jr., your counselors, attorneys, 
solicitors, trustees, agents, clerks, employes, servants and 
workmen, and each and every of you, that you 

Do Absolutely Deslst axd Refraix from, in any man- 
ner whatsoever handling, advertising or selling packages 
or cartons containing bakery products having upon the 
ends thereof any red seal with white line markings thereon. 
or red seal substantially like the Seal or Trade-Mark of your 
orator; or from making, using, selling or handling cartons 
like your orator's carton containing your orator's Trade- 
Xaine " Uxeeda Biscuit " with wrapper accompaniment as 
shown in your orator's exhibit of the same, of the use of the 
word '' Biscuit" upon a white parallelogram, as shown in 
^'Complainant's Exhibit Defendants' Infringing Carton," 
whether preceded by the words "Eta Hargrave Biscuit" 
or any other words associated therewith, or from the use 
of any wrapper application similar to or substantially like 
the wrapper application upon your orator's '' Uxeeda 
Biscuit'' package; and from violating and infringing the 
rights of your orator in the premises, until this Honorable 
Court, in Chancery sitting, shall make other order to the 
contrary. Hereof fail not, under the penalty of what the 
law directs. 

WiTXESS, the Hon. Melville W. Fuller, Chief Justice of 
the United States of America, at Baltimore, in said District, 

this 19th day of October, in the year of our Lord, one 
thousand nine hundred and five and of our Independence, 
the one hundred and thirtieth year. 

James W. Chew, Clerk. 




NATIONAL BISCUIT COMPANY is. HARGRAVE BISCUIT COMPANY 117 



United States of America, 
District of Maryland, 



To-AMt 



I, James W. Chew, Clerk of the United States Circuit 
Court for the District of Maryland, do hereby certify 
that the foregoing is a true copy of the Perpetual Injunction 
which was issued out of said Court in the case entitled 
National Biscuit Company vs. Hargrave Biscuit Company, 
et ah, in said Circuit Court on the 19th day of October, 1905. 

In Testimony Whereof, I hereunto set my hand and 
affix the seal of said Circuit Court this 31st day of Octo- 
ber, 1905. 

Jas. W. Chew, 
Clerk of said Circuit Court. 




Qltrtmf dTourf of f fjB HnifBb ;^f afj^ 



Eastern District of Michigan 



NATIONAL BISCUIT COMPANY 

Complainant, 
vs. 

HAMMELL CRACKER COMPANY, and JAMES 
F. HAMMELL, SAMUEL DUMPHY and P. 
J. HAMMELL, 

Defendants 



IN EQUITY 
No. 3898 



DECREE AND INJUNCTION 



CHARLES K. OFFIELD 
EARL D. BABST 

Solicitors for Complainant. 

THOMAS, CUMMINS & NICHOLS 

Solicitors for Defendants. 



120 NATIONAL BISCUIT COMPANY vs. HAMMELL CRACKER COMPANY 





NATIONAL BISCUIT COMPANY vs. HAMMELL CRACKER COMPANY 12 1 



FINAL DECREE. 

At a session of the Circuit Court of the United States for 
the Eastern District of Michigan, continued and held pur- 
suant to adjournment, at the District Court Room, in the 
City of Detroit, on Friday the thirteenth day of October, 
in the year one thousand nine hundred and five. 

Present : The Honorable Henry H. Swan, District Judge. 



National Biscuit Company. 

^^- • No. 3898. 

In Equity. 



h- 



Hammeh Cracker Company, and 
James F. Hammell, Samuel Dum- 
phy and P. J. Hammell. 

This day came the above named complainant, the National 
Biscuit Company, by Mr. Earl D. Babst and Charles K. 
Ofheld, its Solicitors and of Counsel, and the defendants 
by Messrs. Thomas, Cummins & Nichols, their Sohcitors 
and of Counsel, and it appearing to the Court that the 
defendants do not further desire to contest this action, and 
that they have settled with and paid to the complainant 
the damages, profits and costs arising out of this action and 
the acts complained of in the Bill of Complaint, and that 
there nothing remains as to this litigation, except as to the 
subject matter of injunction, and the entry of final decree 
so expressed herein, the defendant consenting thereto, 

Now, THEREFORE, IT IS ORDERED, ADJUDGED AND DECREED : 

First: That the complainant is the true, rightful origi- 
nator and sole owner of a certain trade-mark, or symbol, 
consisting of a red end seal upon the ends of cartons or 
packages, containing bakery products, having a red back- 
ground and white hne markings thereon; 



122 NATIONAL BISCUIT COMPANY rs. HAMMELL CRACKER COMPANY 

Second: That the defendants have infringed upon and 
violated the exclusive rights of the complainant by the use 
and application upon the ends of their cartons containing 
bakery products^ of a red end seal with white line mark- 
ings thereon; 

Third: That the said defendants, Hammell Cracker Com- 
pany, James F. Hammell, Samuel Dumphy and P. J. Ham- 
mell, and each of them, and their respective agents, servants, 
and employes, and each of them, be and hereby are per- 
petually enjoined from affixing, using or applying, or caus- 
ing to be affixed, used or applied, in any way, upon cartons 
or the ends of cartons containing bakery products, any 
red seal with white line markings thereon, or from using 
or applying upon the ends of their cartons, containing bakery 
products, any seal in simulation or imitation of com- 
plainant's red end seal, or ^^In-er-seal" trade-mark; 

Fourth: It further appearing to this Court that the said 
defendants have settled and paid the complainant the 
damages to complainant and profits to the defendants 
arising out of the infringing acts complained of, and also 
paid to the complainant the costs in this case, no reference 
to the Master for any purpose is therefore made in this case, 
and this decree as entered, is to be, and stand, as final. 



United States of America, 

r SS 

Eastern District of Michigan. 



I, Walter S. Harsha, Clerk of the Circuit Court of the 
United States for the Eastern District of Michigan, do hereby 
certify that the above and foregoing is a true copy of Final 



NATIONAL BISCUIT COMPANY vs. HAMMELL CRACKER COMPANY 123 

Decree in the therein entitled cause as the same appears 
on file and of record in my office; that I have compared 
the same with the original and it is a true and correct trans- 
script therefrom and of the whole thereof. 

In Testimony Whereof, I have hereunto set my hand 
and affixed the seal of said Court, at Detroit, in said dis- 
trict, this 13th day of October, in the year of our Lord 
one thousand nine hundred and five, and of the Indepen- 
dence of the United States of America, the one hundred 
and thirtieth. 

Walter S. Harsha, Clerk. 
By Adelaide Anderson Voorheis, 

Deputy Clerk. 




124 NATIONAL BISCUIT COMPANY vs. HAMMELL CRACKER COMPANY 

INJUNCTION. 

UNITED STATES OF AMERICA: 

The Circuit Court of the United States 
For the Eastern District of Michigan, In Equity. 

The President of the United States of America, 

To Hammell Cracker Company, and James F. Ham- 
mell, Samuel Diunphy and P. J. Hammell, and to their 
counselors, attorneys, solicitors, trustees, agents and 
servants, and each and every of them. Greeting: 

Whereas, It has been represented to us, in the Circuit 
Court of the United States for the Eastern District of Mich- 
igan, in Equity, on the part of the National Biscuit Com- 
pany, Complainant, that it has lately exhibited a Bill of 
Complaint and Decree against you the said Hammell Cracker 
Company, and James F. Hammell, Samuel Dumphy and 
P. J. Hammell, Defendants, to be relieved, touching the 
matters therein complained of ; in which bill and decree it is 
stated, among other things, that you are combining and 
confederating with others to injure the said plaintiff touch- 
ing the matters set forth in the said bill, and that your 
actings and doings in the premises are contrary to equity 
and good conscience; we therefore, in consideration thereof, 
and of the particular matters in the said bill and decree set 
forth, do strictly command you, the said Hammell Cracker 
Company, and James F. Hammell, Samuel Dumphy and 
P. J. Hammell, and the persons before mentioned, and each 
and every of you, under the penalty of Ten Thousand 
Dollars, to be levied of your lands, goods, and chattels, to 



NATIONAL BISCUIT COMPANY vs. HAMMELL CRACKER COMPANY 125 

our use, that you do absolutely desist and refrain from 
perpetually from affixing, using or applying or causing to 
be affixed, used or applied, in any way, upon cartons or 
the ends of cartons containing bakery products, any red 
seal with white line markings thereon, or from using or 
applying upon the ends of their cartons, containing bakery 
products, any seal in simulation, or imitation of, complain- 
ant's red end seal, or ^'In-er-seal" trade-mark, until the 
further order of this Court. 

Witness, the Honorable Melville W. Fuller, Chief Justice 
of the Supreme Court of the United States, this thirteenth 
day of October in the year of our Lord one thousand nine 
hundred and five and of the independence of the United 
States of America the one hundred and thirtieth. 

Walter S. Harsha, 
Clerk. 
By Adelaide Anderson Voorheis, 

Deputy Clerk. 




United States of America, 
Eastern District of Michigan. 



[ ss. 



I, Walter S. Harsha, Clerk of the Circuit Court of the 
United States for the Eastern District of Michigan, do 
hereby certify that the above and foregoing is a true copy 



126 NATIONAL BISCUIT COMPANY vs. HAMMELL CRACKER COMPANY 



of Perpetual Injunction in the therein entitled cause as the 
same appears on file and of record in my office; that I have 
compared the same with the original and it is a true and 
correct transcript therefrom and of the whole thereof. 

In testimony whereof, I have hereunto set my hand and 
affixed the seal of said Court, at Detroit, in said district, 
this 13th day of October, in the year of our Lord one thou- 
sand nine hundred and five, and of the Independence of the 
United States of America the one hundred and thirtieth. 

Walter S. Harsha, 

Clerk. 
By Adelaide Anderson Voorheis, 

Deputy Clerk. 




QTircuif QLonxi of i\)t Mntfet) ^iedm 



District of Indiana 



NATIONAL BISCUIT COMPANY 

Complainant, 



ISAAC F. WHITESIDE, 



Defendant. 



IN EQUITY 

No. 10410 



DEMURRER AND ORDER 
OVERRULING DEMURRER 



OFFIELD, TOWLE & LINTHICUM 
Solicitors for Complainant. 

W. H. H. MILLER 

CHARLES K. OFFIELD 

EARLD. BABST 

Of Counsel for Complainant. 

HARVEY, PICKENS, COX & KAHN 

Solicitors for Defendant. 

KEALING&HUGG 
BAKEWELL & CORNWALL 

Of Counsel for Defendant. 



NATIONAL BISCUIT COMPANY vs WHITESIDE 129 

DEMURRER. 

Circuit Court of the United States. 
District of Indiana. 



National Biscuit Company, 

Complainant, 
vs. 
Isaac F. Whiteside, 

Defendant., 



^In Equity. 
No. 10410. 



The Demurrer of Isaac F. Whiteside, the defendant above 
named to the Bill of Complaint of National Biscuit Com- 
pany, complainant. 

This defendant, Isaac F. Whiteside, by protestation, not 
confessing or acknowledging all or any of the matters and 
things in the said complainant's bill to be true, in such 
manner and form as the same are therein set forth and 
alleged, doth demur thereto and for cause of demurrer 
showeth : 

1. That the said complainant has not in and by its said 
bill made or stated any such cause as doth or ought to entitle 
it to any such discovery or relief as thereby sought and 
prayed for from or against this defendant. 

2. That it does not appear from the facts stated in said 
bill that the complainant is entitled to the exclusive use 
of what is designated in said bill as complainant's ^'In-er- 
seal" trade-mark. 

3. That it does not appear from the allegations of said 
bill, or from the exhibits therein referred to, that defendant 
has infringed and is now infringing any exclusive right of 
complainant in and to the ^'In-er-seal" mark referred to 
in the bill of complaint. 

4. That it does not appear from the facts stated in the 
bill of complaint herein that complainant is entitled to 



130 XATIO-NAL BISCUIT COMPAXY vs. WHITESIDE 

the exclusive use of what is herein designated as com- 
plainant's ''Uneeda" or "Uneeda Biscuit" trade-mark or 

trade-name. 

5. That it does not appear from said bill of complaint, 
or from the exhibits referred to therein, that defendant 
has infringed any exclusiA-e right of complainant in the 
''name Uneeda '" or ''Uneeda Biscuit. "" 

6. That as to the things designated as " the nine remain- 
ing complainant's exhibits." referred to in paragraph 
sixteen of the bill, it does not appear from said bill — 

(a) That the same are described in said bill with suffi- 
cient particularity for the defendant to answer in respect 
to the same; 

(b^ That it does not appear from said bill that com- 
plainant has any exclusive right with respect to any or all 
of said exhibits ; 

(c) That it does not appear from said bill, or from the 
exhibits referred to therein, that defendant has infringed, 
or is now infringing, any exclusive rights of complainant with 
respect to any or all of said exhibits. 

7. That complainant has not in and by its bill of com- 
plaint shown that it is entitled to the sole and exclusive 
use of the form and arrangement and dress of the package 
referred to in paragraph ''ninth"" of the bill of complaint as 
"Complainant's Exhibit Carton Trade Xame I'needa 
Biscuit and AVrapper"": nor has complainant shown by its 
said bill that defendant has infringed, and is now infringing, 
any exclusiA^e right of complainant in and to the same. 

8. That it does not appear from the said bill of com- 
plaint that complainant is entitled to the exclusiA^e use of 
the name "Jersey Butter'" as applied to crackers or 
biscuits; nor does it appear from said bill that defendant 
has infringed, or that defendant is now infringing, any 



NATIONAL BISCUIT COMPANY vs. WHITESIDE 131 

exclusive right of complainant in the name ^^ Jersey Butter" 
as applied to crackers or biscuit. 

9. That it does not appear from said bill that com- 
plainant is entitled to the exclusive use of the figure of a 
cow stamped or marked on crackers; nor does it appear 
from the bill that defendant has infringed, or is now infring- 
ing, any exclusive right of complainant in respect to the 
figure of a cow stamped or marked on crackers or biscuit. 

10. That it does not appear from the bill of complaint 
that complainant is entitled to the exclusive use of the word 
''Crisp" or ''Crispy" as applied to crackers or biscuit; nor 
does it appear from said bill that defendant has infringed, 
or that defendant is now infringing, any exclusive right of 
complainant in and to the word "Crisp" or "Crispy" as a 
mark or name for crackers or biscuit. 

11. That as to all of said bill which undertakes to claim 
infringement by defendant in respect to complainant's 
alleged cartons or packages referred to therein as "Com- 
plainant's Exhibits Cartons Baking Products, Numbers 
1, 2, 3, 4, 5, 6, 7, 8, 9, 10 and 11," "Complainant's Exhibit 
Complainant's Carton Trade Name Uneeda Biscuit and 
Wrapper," and "Complainant's Exhibit Complainant's 
In-er-seal trade-mark," complainant is not in equity with 
clean hands and is not entitled to any equitable relief in 
this cause, as it appears from said exhibits, which are re- 
ferred to in the bill and made part thereof by the allegations 
of the bill, as well as from matters of which this Court will 
take judicial notice, that as to each of said cartons it dis- 
tinctly appears that the same (on the outer wrapper thereof) 
is now being represented by complainant as patented March 
28, 1899 (which is the date of the Peters U. S. Patent No. 
621,974 relating to cartons). Whereas, as appears from 
Volurae 125 of the Federal Reporter, between pages 601 



132 NATI0NAL:BISCUIT company vs. WHITESIDE 

and 609 thereof (of which this Court will take judicial no- 
tice), on the 23rd day of November, 1903, the said Peters 
Patent for Carton was declared invalid by the United States 
Circuit Court of Appeals for the Eighth Circuit, on the ground 
that the same failed to disclose patentable novelty; and that 
it appears from the opinion, of the United 'States Circuit 
Court in said cause (120 Federal Reporter, between pages 
679 and 687), which opinion of the United States Circuit 
Court was reversed by the United States Circuit Court of 
Appeals for the Eighth Circuit in the case reported in 125 
Federal Reporter, supra, that the complainant in this cause, 
the National Biscuit Company, was, at the time said cause 
of Peters YS. Uiiion Biscuit Company {YepoYted in the Federal 
Reporter, volumes 120 and 125, supra) was pending and 
prior thereto, the exclusive licensee of Peters, the patentee 
of said patent No. 621,974, of March 28, 1899, so far as 
said patent might be used for packing bakery products. 
Therefore, it appears from the said bill of complaint, from 
complainant's exhibits above referred to, and from matters 
of which this Court will take judicial notice, that at the time 
of filing the bill in this cause and since the decision of the 
United States Circuit Court of Appeals for the Eighth 
Circuit, rendered November 23, 1903, in said cause of 
Union Biscuit Company, appellant vs. Peters, appellee (see 
125 Federal Reporter, 601-609), that complainant is still 
holding out to the public that said exhibit cartons or pack- 
ages are protected by said Peters' United States letters 
patent, dated March 28, 1899, whereas, at the time of fihng 
this bill of complaint and said exhibits, and since about one 
year before the filing of the same, the said Peters' Patent 
of March 28, 1899, has been adjudged of no force and effect 
by the United States Circuit Court of Appeals for the Eighth 
Circuit, which opinion and the decree entered in pursuance 



NATIONAL BISCUIT COMPANY vs. WHITESIDE 133 

of the same is now, and was at the time of filing the bill of 
complaint herein, in full force and effect, as complainant 
well knew at the time of filing the bill of complaint herein. 

12. That it appears from said bill and the exhibits filed 
therewith, as well as from matters of which this Court will 
take judicial notice, that this defendant has not infringed 
the alleged trade-marks, trade-names or wTappers of com- 
plainant, there not being such similarity betw^een the 
alleged trade-marks, trade-names or wrappers of complain- 
ant and those of defendant, as shown by the exhibits filed 
in connection with complainant's bill, as would deceive an 
ordinary purchaser using reasonable care so that he would 
buy the goods of defendant believing them to be the goods 
of complainant. 

13. That complainant has not in and by its said bill 
stated such a case as doth or ought to entitle it to any 
equitable relief by way of injunction as against defendant, 
it not appearing from said bill that at the time of filing the 
same this defendant was continuing to do the acts of which 
complaint is made as acts done in the past by this defend- 
ant, nor does it appear from said bill that defendant is 
threatening to do, or about to do, the alleged acts com- 
plained of as having been done by the defendant. 

14. As to the allegations of fraud in the bill of com- 
plaint, they are immaterial, since it appears from the whole 
bill, and the exhibits filed therewith, notwithstanding the 
epithets as to fraud used therein, that — 

(a) Complainant has no standing in a court of equity; 

(b) Complainant has no exclusive rights which have 
been violated by defendant; 

(c) Said allegations of fraud, taken in connection with . 
the bill and exhibits filed therewith, do not connect de- 



134 NATIONAL BISCUIT COMPANY rs. WHITESIDE 

fenclant with any specific acts which make liim responsible 
to complainant in this action. 

15. That the bill fails to show such facts in regard to the 
use b}^ defendant of any package, carton, trade-mark or 
wrapper as constitute unfair competition in trade on the 
part of defendant in respect to any article sold by com- 
plainant, in that it does not appear from said bill that any 
article made and sold by defendant has been sold, or is 
likely to be sold, to any one as and for the goods of the com- 
plainant. 

16. That as to paragraph ''fourteen" of the bill, it does 
not constitute an}^ cause of action, nor does it constitute 
any inducement to any cause of action, since it does not 
appear therefrom that if defendant did employ persons 
formerly in the employment of complainant, he thereby 
did an unlawful thing, or anything the doing of which can 
be taken cognizance of by this Court in this action; it does 
not appear from the allegations of paragraph ''fourteen" 
of the bill that the said former employees of complainant 
were not free agents, free to take employment with others 
when and w^here they might see fit. 

17. Referring to paragraph "twentieth" of the bill of 
complaint, defendant demurs thereto on tli-e ground that 
it does not appear from the allegations of the bill in that 
paragraph or elsewhere that complainant is entitled to the 
exclusive use of the certain metallic rack or holder therein 
referred to and marked "Complainant's Exhibit Com- 
plainant's Retail Grocer Carton. Exhibit Rack;" nor does 
it appear from the bill of complaint that defendant has in- 
fringed any exclusive rights of the complainant in and to 
said rack or holder. 

18. That notwithstanding the allegations of the bill of 



NATIONAL BISCUIT COMPANY vs. WHITESIDE 135 

complaint herein as to defendant having originally been 
engaged wholly in the manufacture of bread and after- 
wards engaged in the manufacture of crackers and biscuit, 
it does not appear that defendant, by reason of such fact, 
is liable to the complainant in this suit; since it does not 
appear from the allegations of the bill of complaint, nor 
could it be recognized in law as a sound principle if it do 
appear from the bill of complaint that complainant is en- 
titled to the exclusive monopoly in the manufacture and 
sale of crackers and biscuit. 

19. That as to the allegations contained in "twenty- 
fifth" and "twenty-sixth" paragraphs of the bill, the same 
constitute no cause of action, neither do they constitute 
any inducement to any cause of action, against this defend- 
ant, and are mere surplusage, for the following reasons: 

(a) The defendant is not shown to be a party, nor is 
defendant shown to be in privity with any party, to any 
suit stated or referred to in either of said clauses of the bill ; 

(b) It appears from said decisions or decrees in all of 
said cases (if the Court chooses to refer to the same) that 
the facts in each and all of said cases are utterly and (m- 
tirely different from the facts in the case presented by the 
bill in this case; 

(c) That the question as to defendant's liability in this 
action is to be determined by the facts in this case; and, on 
this demurrer, it clearly appears that complainant has 
stated no cause of action, no matter whether or not, in other 
cases against different defendants, under totally different 
states of facts, complainant has been able to state and 
establish causes of action. 

Wherefore, and for divers other good causes of demurrer 
appearing in the said bill, this defendant demurs thereto 
and humbly demands the judgment of this Court whether 



136 NATIONAL BISCUIT COMPANY vs. WHITESIDE 

he shall be compelled to make any further or other answer 
to the said bill, and prays to be hence dismissed with his 
costs and charges in this behalf most wrongfully sustained. 
Harvey, Pickens, Cox & Kahn, 

Solicitors /or Defendant. 
Kealing & HUGG, 
Bakewell & Cornwall, 
Paul Bakewell, 

Of Counsel for Defendant. 



State of Missouri, 
City of St. Louis 



:i 



Isaac F. Whiteside, being duly sworn, on his oath states 
that he is the defendant above named, and that the fore- 
going demurrer is not interposed for delay. 

Isaac F. Whiteside. 

Sw^orn to and subscribed before me this 3rd day of Feb- 
ruary, 1905. 
My Term expires 17th February, 1905. 

George Bakewell, 

Notary Public. 



NATIONAL BISCUIT COMPANY is. WHITESIDE 137 



ORDER OVERRULING DEMURRER 

In the CiRcpiT Court of the United States 

For the District of Indiana. 

May Term, 1905. June 17th, A. D. 1905. 

Before the Honorable Albert B. Anderson, Judge. 

National Biscuit Company \ 

vs. y No. 10,410 Chancery. 

Isaac F. Whiteside. ) 

Come now the parties by their respective solicitors, and 
thereupon the Court having heard the argument of Counsel 
and being sufficiently advised in the premises doth now 
overrule the demurrer to the bill of complaint herein. 

And the defendant is ruled to answer by the first Monday 
of September next. 



United States of America, ) 
District of Indiana. j 

I, Noble C. Butler, Clerk of the Circuit Court of the 
United States for the District of Indiana, do hereby certify 
that the above and foregoing is a full, true and complete 
copy of an order entered in said court on the 17th day of 



138 



NATIONAL BISCUIT COMPANY vs. WHITESIDE 



June, 1905, in the cause entitled National Biscuit Company 
vs. Isaac F.Whiteside, as fully as the same appears of record 
in my ofhce. 

Witness my hand and the seal of said court, at Indianap- 
olis in said District this 1st day of November, A. D. 1905. 

Noble C. Butler, 

Clerk. 




NATIONAL BISCUIT COMPANY vs. WHITESIDE 139 





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150 NATIONAL BISCUIT COMPANY vs. WHITESIDE 

STIPULATION. 

United States Circuit Court, 
District of Indiana. 

National Biscuit Company, 
Complainant^ 
vs. 
Isaac F. Whiteside, 

Defendant. 

St. Louis^ November 9, 1906. 

A settlement of the above-entitled case is agreed to 
between the parties complainant and defendant, as fol- 
lows : 

The original package exhibits and samples of loose 
crackers referred to in the bill of complaint in this case 
and made part thereof having been produced for the pur- 
pose of inspection by both parties, it is agreed as fol- 
lows: 

That as to Mothers Biscuit package marked ''Com- 
plainant's Exhibit, Defendant's Infringing Carton No. 
1, " it is agreed that Defendant shall abandon the use of 
the red color on the end seal, and instead of the red col- 
ored end seal shall use an end seal of yellow. 

The color of the wrapper shall be changed from blue 
to green. A saniple of the changed form of carton to be 
used by the Defendant is hereto attached and marked 
''Exhibit A." 

As to Defendant's Grraham Crackers complained of in 
this suit, which is marked " Complainant ^s Exhibit, De- 
fendant's Infringing Carton No. 2," and which is pro- 
vided with a red wrapper, it is agreed that the Defendant 
shall change the wrapper from red to brown, and substi- 
tute a yellow end seal for the red end seal. A sample of 



NATIONAL BISCUIT COMPANY vs. WHITESIDE 151 

the change agreed upon is hereto attached and marked 
^^ExliibitB." 

As to Defendant's package of Imperial Toast marked 
'^ Complainant's Exhibit, Defendant's Infringing Carton 
No. 3," Defendant is to abandon the wrapper and the 
name Imperial Toast. 

As to Defendant's Oatmeal Cracker package marked 
''Complainant's Exhibit, Defendant's Infringing Carton 
No. 4, ' ' which is provided with a green wrapper with red 
panels and with red end seals, it is agreed that the de- 
fendant shall abandon the use of that wrapper as well as 
the red colored end seals; but nothing in this is to be 
construed as preventing the Defendant from using the 
word ''oatmeal" in connection with his crackers, or from 
using the name or phrase "For Goodness Sake," or 
from using his own name in connection with oatmeal 
crackers. 

As to "Complainant's Exhibit, Defendant's Infring- 
ing Carton No. 5" (Kentucky Flakes), it is understood 
and agreed that the Defendant shall substitute a yellow 
colored end seal for the red end seal on that exhibit, and 
change the body color of the wrapper, which in said ex- 
hibit is white, from white to a delicate blue color. 

As to "Complainant's Exhibit, Defendant's Infring- 
ing Carton No. 6," which is Whiteside's Oyster Cracker, 
and is of a gray or slate color with red colored end seals, 
it is agreed that Defendant, from and after January 1, 
1907, shall change the body color of the said wrapper 
from a gray to a light blue color, the red end seal for 
such packages having already been changed by the De- 



152 NATIONAL BISCUIT COMPANY vs. WHITESIDE 

fendant from a red color to a yellow color. Except as 
above stated, the printed matter on the said carton is to 
be the same as on the said exhibit, should the Defendant 
desire to use the lettering on that exhibit. 

As to ''Complainant's Exhibit, Defendant's Infring- 
ing Carton No. 7," being for Butter Thin crackers, it is 
understood and agreed that the Defendant has aban- 
doned that package. 

As to ''Complainant's Exhibit, Defendant's Infring- 
ing Carton Xo. 8," which is for Whiteside's Butter crack- 
ers, it is agreed that from and after this date the Defend- 
ant shall not use a red end seal and substitute therefor an 
end seal of yellow color. 

As to "Complainant's Exhibit, Defendant's Infring- 
ing Carton No. 9" (Mamma's Ginger Wafers), it is 
agreed that the Defendant shall change his red end seal 
to an end seal of yellow color. 

As to "Complainant's Exhibit, Defendant's Infring- 
ing Carton No. 10" (Whiteside's Milk Biscuit), it is 
agreed that the defendant shall change his red colored 
end seal to a yellow colored end seal. 

As to "Complainant's Exhibit, Defendant's Infring- 
ing Carton No. 11" (Whiteside's Cracker Meal package), 
it is agreed that the defendant shall, on or before Janu- 
ary 1, 1907, make the following changes in the carton or 
wrapper: Change the outer wrapper to a yellow color and 
substitute new directions and ornamental designs on the 
said wrapper. It is also understood and agreed that the 
defendant, as to the last named carton and wrapper, has 
changed the red end seal to a yellow colored end seal. 



NATIONAL BISCUIT COMPANY vs. WHITESIDE 153 

As to the separate cracker exhibits in this case, it is 
agreed that on or before January 1, 1907, the defendant 
shall take off from said cracker the name ''Crispy" and 
change the form of said cracker from a six-cornered 
cracker to a three-cornered cracker, and abandon the 
word ''Crispy" in connection with bakery products from 
and after January 1, 1907. 

As to "Complainant's Exhibit, Defendant's Infring- 
ing Jersey Butter Cracker," it is agreed that on or be- 
fore January 1, 1907, the defendant shall take off from 
that cracker the picture of a cow, and abandon the use of 
the word "Jersey" in connection with the wrappers, 
boxes or display cans, or in any way in connection with 
the manufacture of crackers. 

It is also understood and agreed that the exhibits 
which have been withdrawn by the Complainant and pro- 
duced here in connection with this settlement, and which 
are referred to in the bill of complaint, shall be returned 
to the Court so as to form part of the record in this case. 

It is also agreed that from this date on the defendant 
shall abandon the use of red colored end seals in con- 
nection with any bakery products manufactured or sold 
by the defendant, and that instead of red colored end 
seals he shall use a yellow colored end seal, or some color 
distinctly different from red. 

It is also agreed that the taxable costs in this suit 
shall be paid by the defendant. 

It is also agreed that in settlement of all claims for 
profits and damages on account of past infringements 
alleged in the bill of complaint herein, the defendant has 
paid to the complainant a sum of money satisfactory to 



154 NATIONAL BISCUIT COMPANY vs. WHITESIDE 

the complainant, receipt of which is hereby acknowledged 
by the complainant. 

It is also agreed that a consent decree for a perpetual 
injunction, consistent with this settlement, shall go 
against the defendant in respect to the packages herein- 
before specified, with the understanding that that injunc- 
tion shall be suspended until January 1, 1907, in respect 
to certain of the packages specified herein and as fully 
explained herein; and that, the changes in the packages 
herein specified being made by the defendant, it shall not 
be contended by the complainant, at any time, that the 
packages, so changed as specified herein, are within the 
scope of any injunction that may be entered in this case 
in pursuance of this agreement. 

Executed in triplicate at St. Louis, Missouri, this 9th 
day of November, 1906. 

Eael D. Babst 

OfFIELD^ ToWLE & LiNTHICUM 

Solicitors and of Counsel for 
National Biscuit Company. 

Paul Bakewell 
Solicitor and of Counsel for 

Isaac F. Whiteside. 

W. H. H. MiLLEE 

Of Counsel for Complainant. 

L. M. Harvey 

Of Counsel for Defendant. 



NATIONAL BISCUIT COMPANY vs. WHITESIDE 155 

FINAL DECREE. 

In the Ciecuit Coukt of the United States. 

For the District of Indiana. 

November Term 1906. December 10th, 1906. 

Before Honorable Albert B. Andeeson^ Judge. 

National Biscuit Company, 
Complainant, 

V. i^No. 10410. 

Isaac F. Whiteside, 

Defendant. 

This cause coining on to be heard upon the pleadings 
and on the proofs taken on behalf of the Complainant, 
Messrs. Miller, Shirley & Miller and Messrs. C. K. Offield 
and Earl D. Babst appearing on behalf of Complainant 
and Messrs. Harvey, Pickens, Cox & Kahn and Mr. Paul 
Bakewell in behalf of the Defendant, and the Defendant 
not desiring to further contest this cause, a settlement 
having been made between the parties, it is therefore 
ordered, adjudged and decreed as follows : 

1. That a settlement of damages and profits having 
been made by the parties and such damages and profits 
paid under such settlement, that no reference to the 
Master is therefore made. 

2. That the taxable costs in this case, which it is 
agreed between counsel in this case amount to $140.35, 
have been paid by the Defendant. 



156 NATIONAL BISCUIT COMPANY vs. WHITESIDE 

3. That an injunction issue according to the prayer 
of Paragraph 1 of Clause 3 of the bill of complaint in this 
case as against carton exhibits Nos. 1 to 11 inclnsive and 
the two individual cracker exhibits, "Crispy" and "Jer- 
sey Butter;" but such injunction is not to take effect or 
be served until January 1. 1907. 

4. That this decree is therefore final. 



i 



United States of America,) 

District of Indiana, | 

I. XoBLE C. BrTLEE, Clei'k of the Circuit Court of the 
United States within and for said district, do hei'eby 
certify that the above and foregoing are full and true 
copies of the stipulation filed and the final decree entered 
on the 10th day of December, 1906, in the case of the 
Xational Biscuit Company against Isaac F. AVhiteside, as 
fully as the same appear upon the files and records now 
in my office. 

Witness my hand and tl:e seal of said Court, at In- 
dianapolis in said district this 12th day of December, 
1906. 

Noble C. Butler, 
Clerk. 




NATIONAL BISCUIT COMPANY vs. WHITESIDE 157 

INJUNCTION. 

In the Circuit Court of the United States, 
For the District of Indiana. 

THE UNITED STATES OF AMERICA. 

To Isaac F. Whiteside, Ms servants, agents and em- 
ployes, and all claiming or holding through or under him. 
Greeting: 

You, and each of you, are hereby strictly restrained 
and perpetually enjoined from in any manner whatso- 
ever handling, advertising or selling packages or cartons 
containing bakery products having upon the ends thereof 
any red seal with white line markings thereon, or red 
seal substantially like the seal or Trade Mark of the 
National Biscuit Company, or from making, using, sell- 
ing or handling cartons like the National Biscuit Com- 
pany's carton containing the National Biscuit Company's 
Trade Name "Uneeda Biscuit" with wrapper accompani- 
ment as shown in the National Biscuit Company's ex- 
hibit of the same in the cause in said court entitled the 
National Biscuit Company against Isaac F. Whiteside, 
No. 10,410, or the use of the word ^'Biscuit" upon a white 
parallelogram,as shown in Complainant's exhibit Defend- 
ant's Infringing Carton No. 1, in said cause, whether 
preceded by the word ' ' Mothers ' ' or any word associated 
therewith, or from the use of any wrapper application 
similar to or substantially like the wrapper application 
upon the National Biscuit Company's "Uneeda Biscuit" 
package; or from the use of any wrapper or red body 
color like or similar to the Graham Wrapper of red body 
color of the National Biscuit Company, shown in Com- 



158 NATIONAL BISCUIT COMPANY vs. WHITESIDE 

plainant's Exhibit Carton Bakery Product No. 2, in said 
cause of the National Biscuit Company against Isaac F. 
Whiteside, No. 10410, or from in any manner copying or 
simulating the other carton exhibits of the National Bis- 
cuit Company with its wrapper accompaniment and red 
seal thereon, as shown and identified by the various ex- 
hibits filed in said above entitled cause; or from selling 
crackers in bulk like Complainant's Exhibit Complain- 
ant's Jersey Butter Cracker, and Complainant's Exhibit 
Complainant's Crispy Cracker, filed in said above en- 
titled cause ; and from violating and infringing the rights 
of the said National Biscuit Company as hereinabove set 
forth. 

Whereof you are not to fail at your peril. 

Witness the Honorable Melville W. Fuller, Chief 
Justice of the Supreme Court of the United States and 
the seal of said Circuit Court at Indianapolis in said 
District, this 1st day of January, A. D. 1907. 

Noble C. Butler. 

Clerk. 




NATIONAL BISCUIT COMPANY vs. WHITESIDE 159 

MARSHAL'S RETURN 

United States of America^) 
District of Indiana. | ^^' 

Received this writ at Indianapolis, Jany. 5th, 1907, 

and served on the within named Isaac F. Whiteside, by 

reading to and in his hearing at Jeffersonville, Clark 

County, Indiana, Jany. 7th, 1907, and by handing him 

copy of same on Jany. 8th, 1907. 

Henry C. Pettit, U. S. Marshal, 

By Alonzo Boyd, Depnty. 



United States of America,] 
District of Indiana, \ 

I, Noble C. Butler, Clerk of the Circuit Court of the 
United States for the District of Indiana, do hereby cer- 
tify that the above and foregoing is a full, true and com- 
plete copy of the writ of injunction and return of the 
marshal thereon, filed in said court on the 11th day of 
January, 1907, in the cause of National Biscuit Company 
vs. Isaac F. Whiteside, No. 10410, as fully as the same 
remains on file in my office. 

Witness my hand and the seal of said Court, at In- 
dianapolis in said District, this 11th day of January, 
A. D. 1907. 

Noble C. Butler, 

Clerk. 




160 



TABLES OF INFRINGEMENTS 161 



TABLES OF INFEINGEMENTS 

In addition to the foregoing, the following tables show 
infringements of trade marks, trade names, labels, wrap- 
pers, and the equitable rights of National Biscuit Com- 
pany as abandoned by various manufacturers under no- 
tice, but before suit. 



162 INFRINGEMENTS ABANDONED BEFORE SUIT 



ABANDONMENTS AS OF JANUARY, 1906 

(Third Edition) * " 

In-er-seal Trade Mark 58 

Uneeda Biscuit 29 

Red Label Graham 27 

Ribbon Tying Design 22 

Mary Ann 22 

Social Tea 13 

Zu Zn 11 

Lemon Snaps label 6 

Oysterettes 6 

Jonnie 4 

Faust 4 

Saratoga Flakes label, Tid Bit, City Soda label. Pre- 
mium Biscuit, Saltine label, Etc., Etc 47 

Total 249 



INFRINGEMENTS ABANDONED BEFORE SUIT 163 



ABANDONMENTS AS OF JANUAKY, 1907 

(Fourth Edition) 

Irt-er-seal Trade Mark 80 

Uneeda Biscuit 35 

Red Label Graham 31 

Ribbon Tying Design 26 

Mary Ann 28 

Social Tea 15 

Zu Zu 11 

Lemon Snaps label 8 

Oysterettes ; 10 

Jonnie 4 

Faust 9 

Refillers of Cans and Boxes 12 

Saratoga Flakes label, Nabisco, City Soda label. Pre- 
mium Biscuit, London Cream Biscuit, Saltine 
label, Oatmeal Crackers label, Tid Bit, Eagle, 

Etc., Etc., Etc 61 

Total 330 



164 INFRINGEMENTS ABANDONED 



SUMMARY OF ABANDONMENTS 

By Injunction 32 

By Notice 330 

Total 362 

NATIONAL BISCUIT COMPANY 
Eael D. Babst 
General Counsel 

New Yoek, January, 1907 



LIBRARY OF CONGRESS 

019 923 849 8 



